`571-272-7822
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` Filed: April 4, 2016
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`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
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`IPR2016-00029
`Patent 7,765,482 B2
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`Samsung Electronics Co. Ltd. (“Samsung”) filed a Petition requesting
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`inter partes review of claims 12, 13, 16, 18, 19, 21–25, 35–38, 40–42, 44–
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`46, and 49 (“the challenged claims”) of U.S. Patent No. 7,765,482 B2
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`(Ex. 1001, “the ’482 patent”). Paper 1 (“Pet.”). Along with the Petition,
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`Samsung filed a motion for joinder with IPR2015-00806, Google Inc. v.
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`Summit 6 LLC, a pending inter partes review involving the ’482 patent.
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`Paper 3 (“Mot.”).
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`Summit 6 LLC (“Patent Owner”) filed a Response to Samsung’s
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`Motion for Joinder, indicating that Patent Owner does not oppose Samsung’s
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`Motion. Paper 7 (“Resp.”). Patent Owner did not file a Preliminary
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`Response to the Petition.
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`For the reasons set forth below, we conclude Samsung has shown that
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`the Petition warrants institution of inter partes review of claims 12, 13, 16,
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`18, 19, 21–25, 35–38, 40–42, 44–46, and 49 of the ’482 patent. In addition,
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`we exercise our discretion to join Samsung as a petitioner in
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`IPR2015-00806.
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`I. BACKGROUND
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`A. RELATED PROCEEDINGS
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`In IPR2015-00806, filed by Google Inc. (“Google”),1 we instituted
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`inter partes review of the challenged claims—claims 12, 13, 16, 18, 19, 21–
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`25, 35–38, 40–42, 44–46, and 49—of the ’482 patent on the grounds of
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`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
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`IPR2016-00029
`Patent 7,765,482 B2
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`unpatentability asserted in the present Petition. IPR2015-00806, Google Inc.
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`v. Summit 6 LLC, Case IPR2015-00806 (Paper 19) (“IPR2015-00806 Inst.
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`Dec.”). In addition, in IPR2015-00807, which also is pending before the
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`Board, Google challenges a related patent, U.S. Patent No. 8,612,515 B2,
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`which issued from a continuation of the application that issued as the
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`’482 patent. See IPR2015-00807, Google Inc. v. Summit 6 LLC, Case
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`IPR2015-00807 (Paper 18); IPR2015-00807, Ex. 1001, [63].
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`Moreover, the ’482 patent is the subject of Ex Parte Reexamination
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`Control No. 90/012,987 (“the Reexamination”), which was requested by
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`Samsung. Pet. 2; Mot. 3–4; IPR2015-00806, Ex. 2040. The Office issued a
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`Final Office Action finding claims 38, 40, 44–46, and 49 of the ’482 patent
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`unpatentable, and Patent Owner appealed to the Board. IPR2015-00806,
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`Ex. 2040; IPR2015-00806, Ex. 2041. After institution of inter partes review
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`in IPR2015-00806, the Board, upon motion by Patent Owner, stayed the
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`Reexamination pending the termination or completion of IPR2015-00806.
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`IPR2015-00806, Paper 26.
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`The ’482 patent also has been asserted in multiple cases in the U.S.
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`District Court for the Northern District of Texas, including Summit 6 LLC v.
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`Research in Motion Corp., et al., Civil Action No. 3:11-cv-00367-O in
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`which Samsung was a defendant. See Pet. 2; Patent Owner’s Mandatory
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`Notices per 37 C.F.R. § 42.8 (Paper 8). After a trial in that case, the jury
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`returned a verdict finding that Samsung infringed the ’482 patent and had
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`not shown the patent to be invalid, and awarded Patent Owner damages.
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`Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1287 (Fed. Cir.
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`3
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`2015). On appeal, the U.S. Court of Appeals for the Federal Circuit
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`affirmed. Id.
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`B. THE ’482 PATENT
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`According to the ’482 patent, at the time of the disclosed invention,
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`sharing digital images over the Internet was complex and required “a level
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`of sophistication . . . beyond that of the ordinary user.” Ex. 1001, 1:20–34.
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`The patent purports to solve this problem with a “web-based media
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`submission tool,” which “allows submission of media objects in a
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`convenient, intuitive manner” that does not require the user to make any
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`modifications to media objects before sending or uploading them. Id.
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`at 1:45–48, 2:60–67.
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`
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`The tool disclosed in the ’482 patent allows a user to select media
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`objects stored at a first location (e.g., a client). Id. at [57], 2:3–6, 2:44–47,
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`4:46–47. The media objects, for example, may be “pictures (images),
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`movies, videos, graphics, [or] sound clips.” Id. at 2:47–48. The user selects
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`the media objects through either a “drag and drop” or a file browsing
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`functionality. Id. at 3:20–48. The tool then may allow the user to confirm
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`the selected media objects with a visual representation, such as a thumbnail
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`image. Id. at [57], 2:9–11, 3:65–4:3.
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`Next, the tool pre-processes the selected media objects, “automatically
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`prepar[ing]” the objects “to meet the requirements of [a] second location”
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`(e.g., a server or web site). Id. at [57], 2:14–17, 2:44–3:12, 5:1–4, 5:26–33.
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`The media objects may be pre-processed in “any number of ways,” such as
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`changing the file format or quality setting, cropping, adding text or
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`annotations, and resizing, which includes “compression.” Id. at [57], 4:52–
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`4
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`4:67. After this pre-processing is complete, the tool transmits or uploads the
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`media objects to the second location. Id. at [57], 3:17–19.
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`C. ILLUSTRATIVE CLAIM
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`Challenged claims 12, 13, 24, 25, and 35–38 are independent
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`claims. See id. at 10:40–14:41. Claim 12, reproduced below, is
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`illustrative of the recited subject matter:
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`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.
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`Id. at 10:40–55.
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`II. PETITION FOR INTER PARTES REVIEW
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`
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`We first consider the merits of the Petition.
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`A. ASSERTED PRIOR ART
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`The Petition relies upon the following references, as well as the
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`supporting Declaration of Paul Clark, D.Sc. (Ex. 1003):
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`U.S. Patent No. 6,018,774 (issued Jan. 25, 2000) (Ex. 1006, “Mayle”);
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`U.S. Patent No. 6,035,323 (issued Mar. 7, 2000) (Ex. 1007, “Narayen”);
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`Patent 7,765,482 B2
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`U.S. Patent No. 6,223,190 B1 (issued Apr. 24, 2001) (Ex. 1005,
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`“Aihara”); and
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`U.S. Patent No. 6,930,709 B1 (issued Aug. 16, 2005) (Ex. 1004,
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`“Creamer”).
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`B. ASSERTED GROUNDS OF UNPATENTABILITY
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`Samsung asserts the following grounds of unpatentability. Pet. 4.
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`Challenged Claims
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`Basis
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`References
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`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
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`§ 103 Creamer and Aihara
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`§ 103 Mayle and Narayen
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`C. CLAIM INTERPRETATION
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`The Board interprets claims of an unexpired patent using the
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`“broadest reasonable construction in light of the specification of the patent in
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`which [they] appear[].” 37 C.F.R. § 42.100(b). We presume a claim term
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`carries its “ordinary and customary meaning,” which is “the meaning that
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`the term would have to a person of ordinary skill in the art in question” at
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`the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
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`(Fed. Cir. 2007) (internal citation and quotations omitted). This
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`presumption, however, is rebutted when the patentee acts as lexicographer
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`by giving the term a particular meaning in the specification with “reasonable
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`clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480
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`(Fed. Cir. 1994).
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`In the Petition, Samsung proposes the same claim constructions
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`proffered by Google in IPR2015-00806. See Pet. 17–22; IPR2015-00806
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`Pet. 18–23. In our institution decision in IPR2015-00806, we construed the
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`claim term “said identification.” IPR2015-00806 Inst. Dec. 4–8. We
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`determined that no other claim terms required construction. Id. at 5. We are
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`not persuaded that any modification of our claim construction analysis in
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`IPR2015-00806 is necessary, and we incorporate that analysis into this
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`Decision. Id. at 4–8.
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`D. ASSERTED OBVIOUSNESS GROUNDS
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`Samsung argues that claims 12, 13, 16, 18, 19, 21–25, 35–38, 40–42,
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`44–46, and 49 of the ’482 patent would have been obvious over Creamer
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`and Aihara, as well as that these claims would have been obvious over
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`Mayle and Narayen. Pet. 4, 22–58. These asserted grounds of
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`unpatentability are the same as those asserted by Google and instituted for
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`inter partes review in IPR2015-00806. See id. at 1–4, 22–58;
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`IPR2015-00806 Inst. Dec. 4, 8–33. In addition, Samsung supports these
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`assertions with the same arguments and evidence proffered by Google in
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`IPR2015-00806, including the identical Declaration of Dr. Clark. Compare
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`Pet., with IPR2015-00806 Pet.; compare Ex. 1003, with IPR2015-00806
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`Ex. 1003. Patent Owner has not filed a Preliminary Response in this
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`proceeding to contest Samsung’s assertions.
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`For the same reasons given in our institution decision in IPR2015-
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`00806, we determine Samsung has demonstrated that the present Petition
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`warrants institution of inter partes review on the asserted grounds that
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`claims 12, 13, 16, 18, 19, 21–25, 35–38, 40–42, 44–46, and 49 of the
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`’482 patent would have been obvious over Creamer and Aihara, as well as
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`over Mayle and Narayen. IPR2015-00806 Inst. Dec. 8–33. We incorporate
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`our analysis from our institution decision in IPR2015-00806 into this
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`Decision. Id.
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`III. MOTION FOR JOINDER
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`In the Motion for Joinder, Samsung seeks joinder with
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`IPR2015-00806. Mot. 1. Samsung filed the present Motion within one
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`month of our decision instituting inter partes review in IPR2015-00806. See
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`IPR2015-00806 Inst. Dec.; Mot. 1, 5. Therefore, the Motion is timely under
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`37 C.F.R. § 42.122(b).2 See 37 C.F.R. § 42.122(b) (“Any request for joinder
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`must be filed, as a motion under § 42.22, no later than one month after the
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`institution date of any inter partes review for which joinder is requested.”).
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`The Board, acting on behalf of the Director, has the discretion to join
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`a party to a pending inter partes review where the conditions of 35 U.S.C.
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`§ 315(c) are met. See 35 U.S.C. § 315(c); see also 37 C.F.R. § 42.4(a) (“The
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`Board institutes the trial on behalf of the Director.”). Specifically, 35 U.S.C.
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`§ 315(c) provides:
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`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.
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`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.”).
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`As noted above, we instituted inter partes review of the challenged
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`claims of the ’482 patent in IPR2015-00806. See generally IPR2015-00806
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`Inst. Dec. In addition, we determine above that Samsung properly filed a
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`Petition that warrants institution of inter partes review of the same claims.
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`Moreover, Patent Owner did not file a Preliminary Response to the Petition
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`within the deadline set in 37 C.F.R. § 42.107(b). Accordingly, the
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`conditions of 35 U.S.C. § 315(c) are satisfied, and we must consider whether
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`to exercise our discretion to join Samsung as a petitioner in IPR2015-00806.
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`Neither party to IPR2015-00806 has opposed Samsung’s request for
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`joinder. Patent Owner expressly represents that it “does not oppose”
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`Samsung’s Motion. Resp. In addition, Samsung represents in its Motion
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`that Google, the petitioner in IPR2015-00806, does not oppose Samsung’s
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`request. Mot. 2, 6.
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`Moreover, we agree with Samsung that joinder would not impact the
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`substantive issues presented in IPR2015-00806. Id. at 1–2, 6–7. The
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`grounds asserted in Samsung’s Petition are identical to the grounds asserted
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`and instituted in IPR2015-00806—relying on the same prior art, same
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`arguments, and same evidence, including the same supporting expert
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`declaration. See id. at 2–3, 6; see generally Pet.; IPR2015-00806 Inst. Dec.;
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`IPR2015-00806 Pet.
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`In addition, based on Samsung’s requested “understudy” role in
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`IPR2015-00806 and representations related to scheduling and discovery, we
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`are persuaded that joinder would have minimal impact on the procedural
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`aspects of IPR2015-00806. See Mot. 2–3, 6–7. Samsung expressly agrees
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`to “adhere to all applicable deadlines set forth in the Scheduling Order” in
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`IPR2015-00806. Id. at 2, 6–7. Therefore, joinder will not impact the trial
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`schedule in IPR2015-00806. Id. Samsung also agrees to take an
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`“understudy role” in IPR2015-00806 “[u]nless and until Google settles with
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`. . . Patent Owner” and is no longer a party to the proceeding. Id. at 7.
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`Specifically, Samsung represents that it “will cooperate” with Google “on all
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`briefing and discovery” and “will coordinate with counsel for Google
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`regarding the consolidation of all filings and will not submit any separate
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`filings, unless and until Google settles with Patent Owner or
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`[IPR2015-00806] is otherwise terminated as to Google.” Id. at 2, 6.
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`Moreover, given that the asserted grounds that we determine above warrant
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`institution of review and the instituted grounds in IPR2015-00806 are the
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`same—including the same supporting prior art, arguments, evidence, and
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`expert—joinder should not necessitate any additional briefing or discovery
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`from Patent Owner beyond that already required in IPR2015-00806. See id.
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`at 2–3, 6–7; Resp.
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`For the foregoing reasons, Samsung has met its burden to demonstrate
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`that joinder with IPR2015-00806 is warranted under the circumstances.
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`Accordingly, we exercise our discretion to join Samsung as a petitioner in
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`IPR2015-00806.
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`As a petitioner in IPR2015-00806, Samsung shall adhere to the
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`existing schedule of IPR2015-00806 and the understudy role it has agreed to
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`assume. More specifically, so long as Google is a party to IPR2015-00806,
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`all filings by Samsung in IPR2015-00806 shall be consolidated with the
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`filings of Google, and Samsung shall not file any separate paper or briefing
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`IPR2016-00029
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`without prior authorization from the Board. See Mot. 2, 6–7. The page
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`limits set forth in 37 C.F.R. § 42.24 will apply to all consolidated filings.
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`Samsung is bound by any discovery agreements between Patent
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`Owner and Google and shall not seek any discovery beyond that sought by
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`Google. Patent Owner shall not be required to provide any additional
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`discovery or deposition time as a result of joinder. In addition, if an oral
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`hearing is requested and scheduled, Google and Samsung shall collectively
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`designate attorneys to present at the oral hearing in a consolidated argument.
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`If Google and Samsung are unable to reach an agreement, Google alone
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`shall designate the attorneys to present at the hearing. Moreover, no
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`additional argument time will be provided as a result of joinder.
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`The Board expects Google and Samsung to resolve any disputes
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`between them and to contact the Board only if such matters cannot be
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`resolved.
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`IV. ORDER
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`Accordingly, it is:
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`ORDERED that Samsung’s Motion for Joinder with IPR2015-00806
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`is granted;
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`FURTHER ORDERED that Samsung is joined as a petitioner in
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`IPR2015-00806;
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`FURTHER ORDERED that, pursuant to 37 C.F.R. § 42.71, the
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`Petition is dismissed;
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`FURTHER ORDERED that the instant proceeding, IPR2016-00029,
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`is terminated under 37 C.F.R. § 42.72, and all further filings shall be made
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`only in IPR2015-00806;
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`IPR2016-00029
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`FURTHER ORDERED that the asserted grounds of unpatentability on
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`which a trial was instituted in IPR2015-00806 are unchanged;
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`FURTHER ORDERED that the Scheduling Order for IPR2015-00806
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`(Paper 20), as modified by stipulation of the parties (Paper 25) and order of
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`the Board (Paper 36), shall continue to govern IPR2015-00806;
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`FURTHER ORDERED that absent prior authorization from the
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`Board, all filings by Samsung in IPR2015-00806 shall be consolidated with
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`the filings of Google, and the consolidated filings shall comply with the page
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`limits set forth in 37 C.F.R. § 42.24;
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`FURTHER ORDERED that Samsung is bound by any discovery
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`agreements between Patent Owner and Google in IPR2015-00806 and that
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`Samsung shall not seek any discovery beyond that sought by Google;
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`FURTHER ORDERED that if an oral hearing is requested and
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`scheduled in IPR2015-00806, Google and Samsung shall collectively
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`designate attorneys to present at the hearing in a consolidated argument, and
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`if Google and Samsung are unable to reach an agreement, Google alone shall
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`designate the attorneys to present at the hearing;
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`FURTHER ORDERED that no additional argument time at oral
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`hearing will be provided as a result of joinder;
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`FURTHER ORDERED that the case caption in IPR2015-00806 shall
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`be changed to reflect the joinder of Samsung as a petitioner in accordance
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`with the attached example; and
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`FURTHER ORDERED that a copy of this Decision be entered into
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`the file of IPR2015-00806.
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`IPR2016-00029
`Patent 7,765,482 B2
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`For PETITIONER:
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`Brian Erickson
`James M. Heintz
`DLA Piper LLP (US)
`Samsung_Summit-IPR@dlapiper.com
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`For PATENT OWNER:
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`Peter J. Ayers
`John Shumaker
`Brian Mangum
`Lee & Hayes, PLLC
`peter@leehayes.com
`jshumaker@leehayes.com
`brianm@leehayes.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`GOOGLE INC., SAMSUNG ELECTRONICS CO., LTD.
`Petitioner,
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`v.
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`SUMMIT 6 LLC,
`Patent Owner.
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`____________
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`Case IPR2015-008061
`Patent 7,765,482 B2
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`____________
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`1 Samsung Electronics Co., Ltd., who filed a Petition in IPR2016-00029,
`has been joined as a petitioner in the instant proceeding.