throbber
Trials@uspto.gov Paper No. 9
`571-272-7822
`
` Filed: April 4, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`SUMMIT 6 LLC,
`Patent Owner.
`
`____________
`
`Case IPR2016-00029
`Patent 7,765,482 B2
`____________
`
`
`
`
`Before HOWARD B. BLANKENSHIP, GEORGIANNA W. BRADEN, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`
`BEGLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review, Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. §§ 42.108, 42.122
`
`
`
`
`
`
`
`
`
`

`
`IPR2016-00029
`Patent 7,765,482 B2
`
`
`Samsung Electronics Co. Ltd. (“Samsung”) filed a Petition requesting
`
`inter partes review of claims 12, 13, 16, 18, 19, 21–25, 35–38, 40–42, 44–
`
`46, and 49 (“the challenged claims”) of U.S. Patent No. 7,765,482 B2
`
`(Ex. 1001, “the ’482 patent”). Paper 1 (“Pet.”). Along with the Petition,
`
`Samsung filed a motion for joinder with IPR2015-00806, Google Inc. v.
`
`Summit 6 LLC, a pending inter partes review involving the ’482 patent.
`
`Paper 3 (“Mot.”).
`
`Summit 6 LLC (“Patent Owner”) filed a Response to Samsung’s
`
`Motion for Joinder, indicating that Patent Owner does not oppose Samsung’s
`
`Motion. Paper 7 (“Resp.”). Patent Owner did not file a Preliminary
`
`Response to the Petition.
`
`For the reasons set forth below, we conclude Samsung has shown that
`
`the Petition warrants institution of inter partes review of claims 12, 13, 16,
`
`18, 19, 21–25, 35–38, 40–42, 44–46, and 49 of the ’482 patent. In addition,
`
`we exercise our discretion to join Samsung as a petitioner in
`
`IPR2015-00806.
`
`I. BACKGROUND
`
`A. RELATED PROCEEDINGS
`
`In IPR2015-00806, filed by Google Inc. (“Google”),1 we instituted
`
`inter partes review of the challenged claims—claims 12, 13, 16, 18, 19, 21–
`
`25, 35–38, 40–42, 44–46, and 49—of the ’482 patent on the grounds of
`
`
`1 HTC Corporation and HTC America, Inc. (collectively, “HTC”) also were
`petitioners in IPR2015-00806. IPR2015-00806, Paper 1 (“IPR2015-00806
`Pet.”), 1 n.1. After filing the petition, however, HTC and Patent Owner filed
`a joint motion to terminate HTC’s participation in the case, which we
`granted. IPR2015-00806, Paper 9; IPR2015-00806, Paper 11.
`2
`
`
`
`

`
`IPR2016-00029
`Patent 7,765,482 B2
`
`unpatentability asserted in the present Petition. IPR2015-00806, Google Inc.
`
`v. Summit 6 LLC, Case IPR2015-00806 (Paper 19) (“IPR2015-00806 Inst.
`
`Dec.”). In addition, in IPR2015-00807, which also is pending before the
`
`Board, Google challenges a related patent, U.S. Patent No. 8,612,515 B2,
`
`which issued from a continuation of the application that issued as the
`
`’482 patent. See IPR2015-00807, Google Inc. v. Summit 6 LLC, Case
`
`IPR2015-00807 (Paper 18); IPR2015-00807, Ex. 1001, [63].
`
`Moreover, the ’482 patent is the subject of Ex Parte Reexamination
`
`Control No. 90/012,987 (“the Reexamination”), which was requested by
`
`Samsung. Pet. 2; Mot. 3–4; IPR2015-00806, Ex. 2040. The Office issued a
`
`Final Office Action finding claims 38, 40, 44–46, and 49 of the ’482 patent
`
`unpatentable, and Patent Owner appealed to the Board. IPR2015-00806,
`
`Ex. 2040; IPR2015-00806, Ex. 2041. After institution of inter partes review
`
`in IPR2015-00806, the Board, upon motion by Patent Owner, stayed the
`
`Reexamination pending the termination or completion of IPR2015-00806.
`
`IPR2015-00806, Paper 26.
`
`The ’482 patent also has been asserted in multiple cases in the U.S.
`
`District Court for the Northern District of Texas, including Summit 6 LLC v.
`
`Research in Motion Corp., et al., Civil Action No. 3:11-cv-00367-O in
`
`which Samsung was a defendant. See Pet. 2; Patent Owner’s Mandatory
`
`Notices per 37 C.F.R. § 42.8 (Paper 8). After a trial in that case, the jury
`
`returned a verdict finding that Samsung infringed the ’482 patent and had
`
`not shown the patent to be invalid, and awarded Patent Owner damages.
`
`Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1287 (Fed. Cir.
`
`3
`
`
`
`

`
`IPR2016-00029
`Patent 7,765,482 B2
`
`2015). On appeal, the U.S. Court of Appeals for the Federal Circuit
`
`affirmed. Id.
`
`B. THE ’482 PATENT
`
`
`
`According to the ’482 patent, at the time of the disclosed invention,
`
`sharing digital images over the Internet was complex and required “a level
`
`of sophistication . . . beyond that of the ordinary user.” Ex. 1001, 1:20–34.
`
`The patent purports to solve this problem with a “web-based media
`
`submission tool,” which “allows submission of media objects in a
`
`convenient, intuitive manner” that does not require the user to make any
`
`modifications to media objects before sending or uploading them. Id.
`
`at 1:45–48, 2:60–67.
`
`
`
`The tool disclosed in the ’482 patent allows a user to select media
`
`objects stored at a first location (e.g., a client). Id. at [57], 2:3–6, 2:44–47,
`
`4:46–47. The media objects, for example, may be “pictures (images),
`
`movies, videos, graphics, [or] sound clips.” Id. at 2:47–48. The user selects
`
`the media objects through either a “drag and drop” or a file browsing
`
`functionality. Id. at 3:20–48. The tool then may allow the user to confirm
`
`the selected media objects with a visual representation, such as a thumbnail
`
`image. Id. at [57], 2:9–11, 3:65–4:3.
`
`Next, the tool pre-processes the selected media objects, “automatically
`
`prepar[ing]” the objects “to meet the requirements of [a] second location”
`
`(e.g., a server or web site). Id. at [57], 2:14–17, 2:44–3:12, 5:1–4, 5:26–33.
`
`The media objects may be pre-processed in “any number of ways,” such as
`
`changing the file format or quality setting, cropping, adding text or
`
`annotations, and resizing, which includes “compression.” Id. at [57], 4:52–
`
`4
`
`
`
`

`
`IPR2016-00029
`Patent 7,765,482 B2
`
`4:67. After this pre-processing is complete, the tool transmits or uploads the
`
`media objects to the second location. Id. at [57], 3:17–19.
`
`C. ILLUSTRATIVE CLAIM
`
`Challenged claims 12, 13, 24, 25, and 35–38 are independent
`
`claims. See id. at 10:40–14:41. Claim 12, reproduced below, is
`
`illustrative of the recited subject matter:
`
`12. A computer implemented method of pre-processing media
`objects in a local device for subsequent transmission to a
`remote device, comprising:
`a. receiving pre-processing parameters from a remote
`device, said pre-processing parameters including a
`specification of an amount of media data;
`b. receiving an identification of a group of one or more
`media objects for transmission, a collective media data of
`said group of one or more media objects being limited by
`said received pre-processing parameters;
`c. pre-processing said identified group of one or more
`media objects using said received pre-processing
`parameters, wherein said pre-processing comprises
`encoding or otherwise converting said media object; and
`d. transmitting said pre-processed group of one or more
`media objects to the remote device.
`
`Id. at 10:40–55.
`
`II. PETITION FOR INTER PARTES REVIEW
`
`
`
`We first consider the merits of the Petition.
`
`A. ASSERTED PRIOR ART
`
`The Petition relies upon the following references, as well as the
`
`supporting Declaration of Paul Clark, D.Sc. (Ex. 1003):
`
`U.S. Patent No. 6,018,774 (issued Jan. 25, 2000) (Ex. 1006, “Mayle”);
`
`U.S. Patent No. 6,035,323 (issued Mar. 7, 2000) (Ex. 1007, “Narayen”);
`
`5
`
`
`
`

`
`IPR2016-00029
`Patent 7,765,482 B2
`
`
`U.S. Patent No. 6,223,190 B1 (issued Apr. 24, 2001) (Ex. 1005,
`
`“Aihara”); and
`
`U.S. Patent No. 6,930,709 B1 (issued Aug. 16, 2005) (Ex. 1004,
`
`“Creamer”).
`
`B. ASSERTED GROUNDS OF UNPATENTABILITY
`
`Samsung asserts the following grounds of unpatentability. Pet. 4.
`
`Challenged Claims
`
`Basis
`
`References
`
`12, 13, 16, 18, 19, 21–25, 35–
`38, 40–42, 44–46, and 49
`12, 13, 16, 18, 19, 21–25, 35–
`38, 40–42, 44–46, and 49
`
`§ 103 Creamer and Aihara
`
`§ 103 Mayle and Narayen
`
`
`C. CLAIM INTERPRETATION
`
`The Board interprets claims of an unexpired patent using the
`
`“broadest reasonable construction in light of the specification of the patent in
`
`which [they] appear[].” 37 C.F.R. § 42.100(b). We presume a claim term
`
`carries its “ordinary and customary meaning,” which is “the meaning that
`
`the term would have to a person of ordinary skill in the art in question” at
`
`the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`
`(Fed. Cir. 2007) (internal citation and quotations omitted). This
`
`presumption, however, is rebutted when the patentee acts as lexicographer
`
`by giving the term a particular meaning in the specification with “reasonable
`
`clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480
`
`(Fed. Cir. 1994).
`
`In the Petition, Samsung proposes the same claim constructions
`
`proffered by Google in IPR2015-00806. See Pet. 17–22; IPR2015-00806
`
`Pet. 18–23. In our institution decision in IPR2015-00806, we construed the
`
`6
`
`
`
`

`
`IPR2016-00029
`Patent 7,765,482 B2
`
`claim term “said identification.” IPR2015-00806 Inst. Dec. 4–8. We
`
`determined that no other claim terms required construction. Id. at 5. We are
`
`not persuaded that any modification of our claim construction analysis in
`
`IPR2015-00806 is necessary, and we incorporate that analysis into this
`
`Decision. Id. at 4–8.
`
`D. ASSERTED OBVIOUSNESS GROUNDS
`
`Samsung argues that claims 12, 13, 16, 18, 19, 21–25, 35–38, 40–42,
`
`44–46, and 49 of the ’482 patent would have been obvious over Creamer
`
`and Aihara, as well as that these claims would have been obvious over
`
`Mayle and Narayen. Pet. 4, 22–58. These asserted grounds of
`
`unpatentability are the same as those asserted by Google and instituted for
`
`inter partes review in IPR2015-00806. See id. at 1–4, 22–58;
`
`IPR2015-00806 Inst. Dec. 4, 8–33. In addition, Samsung supports these
`
`assertions with the same arguments and evidence proffered by Google in
`
`IPR2015-00806, including the identical Declaration of Dr. Clark. Compare
`
`Pet., with IPR2015-00806 Pet.; compare Ex. 1003, with IPR2015-00806
`
`Ex. 1003. Patent Owner has not filed a Preliminary Response in this
`
`proceeding to contest Samsung’s assertions.
`
`For the same reasons given in our institution decision in IPR2015-
`
`00806, we determine Samsung has demonstrated that the present Petition
`
`warrants institution of inter partes review on the asserted grounds that
`
`claims 12, 13, 16, 18, 19, 21–25, 35–38, 40–42, 44–46, and 49 of the
`
`’482 patent would have been obvious over Creamer and Aihara, as well as
`
`over Mayle and Narayen. IPR2015-00806 Inst. Dec. 8–33. We incorporate
`
`7
`
`
`
`

`
`IPR2016-00029
`Patent 7,765,482 B2
`
`our analysis from our institution decision in IPR2015-00806 into this
`
`Decision. Id.
`
`III. MOTION FOR JOINDER
`
`
`
`In the Motion for Joinder, Samsung seeks joinder with
`
`IPR2015-00806. Mot. 1. Samsung filed the present Motion within one
`
`month of our decision instituting inter partes review in IPR2015-00806. See
`
`IPR2015-00806 Inst. Dec.; Mot. 1, 5. Therefore, the Motion is timely under
`
`37 C.F.R. § 42.122(b).2 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.”).
`
`The Board, acting on behalf of the Director, has the discretion to join
`
`a party to a pending inter partes review where the conditions of 35 U.S.C.
`
`§ 315(c) are met. See 35 U.S.C. § 315(c); see also 37 C.F.R. § 42.4(a) (“The
`
`Board institutes the trial on behalf of the Director.”). Specifically, 35 U.S.C.
`
`§ 315(c) provides:
`
`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.
`
`
`2 We note that the one-year time bar of 35 U.S.C. § 315(b) and 37 C.F.R.
`§ 42.101(b) does not apply to Petitioner’s request for joinder with IPR2015-
`00806. See 35 U.S.C. § 315(b) (“The time limitation set forth in the
`preceding sentence shall not apply to a request for joinder under
`subsection (c).”); 37 C.F.R. §§ 42.101(b), 42.122(b) (“The time period set
`forth in § 42.101(b) shall not apply when the petition is accompanied by a
`request for joinder.”).
`
`8
`
`
`
`

`
`IPR2016-00029
`Patent 7,765,482 B2
`
`
`As noted above, we instituted inter partes review of the challenged
`
`claims of the ’482 patent in IPR2015-00806. See generally IPR2015-00806
`
`Inst. Dec. In addition, we determine above that Samsung properly filed a
`
`Petition that warrants institution of inter partes review of the same claims.
`
`Moreover, Patent Owner did not file a Preliminary Response to the Petition
`
`within the deadline set in 37 C.F.R. § 42.107(b). Accordingly, the
`
`conditions of 35 U.S.C. § 315(c) are satisfied, and we must consider whether
`
`to exercise our discretion to join Samsung as a petitioner in IPR2015-00806.
`
`Neither party to IPR2015-00806 has opposed Samsung’s request for
`
`joinder. Patent Owner expressly represents that it “does not oppose”
`
`Samsung’s Motion. Resp. In addition, Samsung represents in its Motion
`
`that Google, the petitioner in IPR2015-00806, does not oppose Samsung’s
`
`request. Mot. 2, 6.
`
`Moreover, we agree with Samsung that joinder would not impact the
`
`substantive issues presented in IPR2015-00806. Id. at 1–2, 6–7. The
`
`grounds asserted in Samsung’s Petition are identical to the grounds asserted
`
`and instituted in IPR2015-00806—relying on the same prior art, same
`
`arguments, and same evidence, including the same supporting expert
`
`declaration. See id. at 2–3, 6; see generally Pet.; IPR2015-00806 Inst. Dec.;
`
`IPR2015-00806 Pet.
`
`In addition, based on Samsung’s requested “understudy” role in
`
`IPR2015-00806 and representations related to scheduling and discovery, we
`
`are persuaded that joinder would have minimal impact on the procedural
`
`aspects of IPR2015-00806. See Mot. 2–3, 6–7. Samsung expressly agrees
`
`to “adhere to all applicable deadlines set forth in the Scheduling Order” in
`
`9
`
`
`
`

`
`IPR2016-00029
`Patent 7,765,482 B2
`
`IPR2015-00806. Id. at 2, 6–7. Therefore, joinder will not impact the trial
`
`schedule in IPR2015-00806. Id. Samsung also agrees to take an
`
`“understudy role” in IPR2015-00806 “[u]nless and until Google settles with
`
`. . . Patent Owner” and is no longer a party to the proceeding. Id. at 7.
`
`Specifically, Samsung represents that it “will cooperate” with Google “on all
`
`briefing and discovery” and “will coordinate with counsel for Google
`
`regarding the consolidation of all filings and will not submit any separate
`
`filings, unless and until Google settles with Patent Owner or
`
`[IPR2015-00806] is otherwise terminated as to Google.” Id. at 2, 6.
`
`Moreover, given that the asserted grounds that we determine above warrant
`
`institution of review and the instituted grounds in IPR2015-00806 are the
`
`same—including the same supporting prior art, arguments, evidence, and
`
`expert—joinder should not necessitate any additional briefing or discovery
`
`from Patent Owner beyond that already required in IPR2015-00806. See id.
`
`at 2–3, 6–7; Resp.
`
`For the foregoing reasons, Samsung has met its burden to demonstrate
`
`that joinder with IPR2015-00806 is warranted under the circumstances.
`
`Accordingly, we exercise our discretion to join Samsung as a petitioner in
`
`IPR2015-00806.
`
`As a petitioner in IPR2015-00806, Samsung shall adhere to the
`
`existing schedule of IPR2015-00806 and the understudy role it has agreed to
`
`assume. More specifically, so long as Google is a party to IPR2015-00806,
`
`all filings by Samsung in IPR2015-00806 shall be consolidated with the
`
`filings of Google, and Samsung shall not file any separate paper or briefing
`
`10
`
`
`
`

`
`IPR2016-00029
`Patent 7,765,482 B2
`
`without prior authorization from the Board. See Mot. 2, 6–7. The page
`
`limits set forth in 37 C.F.R. § 42.24 will apply to all consolidated filings.
`
`Samsung is bound by any discovery agreements between Patent
`
`Owner and Google and shall not seek any discovery beyond that sought by
`
`Google. Patent Owner shall not be required to provide any additional
`
`discovery or deposition time as a result of joinder. In addition, if an oral
`
`hearing is requested and scheduled, Google and Samsung shall collectively
`
`designate attorneys to present at the oral hearing in a consolidated argument.
`
`If Google and Samsung are unable to reach an agreement, Google alone
`
`shall designate the attorneys to present at the hearing. Moreover, no
`
`additional argument time will be provided as a result of joinder.
`
`The Board expects Google and Samsung to resolve any disputes
`
`between them and to contact the Board only if such matters cannot be
`
`resolved.
`
`IV. ORDER
`
`Accordingly, it is:
`
`ORDERED that Samsung’s Motion for Joinder with IPR2015-00806
`
`is granted;
`
`FURTHER ORDERED that Samsung is joined as a petitioner in
`
`IPR2015-00806;
`
`FURTHER ORDERED that, pursuant to 37 C.F.R. § 42.71, the
`
`Petition is dismissed;
`
`FURTHER ORDERED that the instant proceeding, IPR2016-00029,
`
`is terminated under 37 C.F.R. § 42.72, and all further filings shall be made
`
`only in IPR2015-00806;
`
`11
`
`
`
`

`
`IPR2016-00029
`Patent 7,765,482 B2
`
`
`FURTHER ORDERED that the asserted grounds of unpatentability on
`
`which a trial was instituted in IPR2015-00806 are unchanged;
`
`FURTHER ORDERED that the Scheduling Order for IPR2015-00806
`
`(Paper 20), as modified by stipulation of the parties (Paper 25) and order of
`
`the Board (Paper 36), shall continue to govern IPR2015-00806;
`
`FURTHER ORDERED that absent prior authorization from the
`
`Board, all filings by Samsung in IPR2015-00806 shall be consolidated with
`
`the filings of Google, and the consolidated filings shall comply with the page
`
`limits set forth in 37 C.F.R. § 42.24;
`
`FURTHER ORDERED that Samsung is bound by any discovery
`
`agreements between Patent Owner and Google in IPR2015-00806 and that
`
`Samsung shall not seek any discovery beyond that sought by Google;
`
`FURTHER ORDERED that if an oral hearing is requested and
`
`scheduled in IPR2015-00806, Google and Samsung shall collectively
`
`designate attorneys to present at the hearing in a consolidated argument, and
`
`if Google and Samsung are unable to reach an agreement, Google alone shall
`
`designate the attorneys to present at the hearing;
`
`FURTHER ORDERED that no additional argument time at oral
`
`hearing will be provided as a result of joinder;
`
`FURTHER ORDERED that the case caption in IPR2015-00806 shall
`
`be changed to reflect the joinder of Samsung as a petitioner in accordance
`
`with the attached example; and
`
`FURTHER ORDERED that a copy of this Decision be entered into
`
`the file of IPR2015-00806.
`
`
`
`
`
`12
`
`
`
`

`
`IPR2016-00029
`Patent 7,765,482 B2
`
`For PETITIONER:
`
`Brian Erickson
`James M. Heintz
`DLA Piper LLP (US)
`Samsung_Summit-IPR@dlapiper.com
`
`For PATENT OWNER:
`
`Peter J. Ayers
`John Shumaker
`Brian Mangum
`Lee & Hayes, PLLC
`peter@leehayes.com
`jshumaker@leehayes.com
`brianm@leehayes.com
`
`
`
`
`13
`
`
`
`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC., SAMSUNG ELECTRONICS CO., LTD.
`Petitioner,
`
`v.
`
`SUMMIT 6 LLC,
`Patent Owner.
`
`____________
`
`
`Case IPR2015-008061
`Patent 7,765,482 B2
`
`____________
`
`
`
`
`
`
`
`
`1 Samsung Electronics Co., Ltd., who filed a Petition in IPR2016-00029,
`has been joined as a petitioner in the instant proceeding.

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