Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 21
`Entered: November 16, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`QUALCOMM INC.,
`Petitioner,
`
`v.
`
`BANDSPEED, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00316,
`Case IPR2015-01581
`Patent 7,477,624 B2
`____________
`
`
`
`Before BART A. GERSTENBLITH, DAVID C. McKONE, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, 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 21
`Entered: November 16, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`QUALCOMM INC.,
`Petitioner,
`
`v.
`
`BANDSPEED, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00316,
`Case IPR2015-01581
`Patent 7,477,624 B2
`____________
`
`
`
`Before BART A. GERSTENBLITH, DAVID C. McKONE, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, 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)
`
`
`
`
`
`IPR2015-00316, IPR2015-01581
`Patent 7,477,624 B2
`
`
`INTRODUCTION
`In IPR2015-00316, Marvell Semiconductor, Inc. (“Marvell”),
`MediaTek Inc., and MediaTek USA, Inc. (collectively, “MediaTek
`petitioners”) filed a Petition (Paper 1, “MediaTek Pet.”)1 to institute inter
`partes review of claims 9–12 and 21–24 of U.S. Patent No. 7,477,624 B2
`(Ex. 1001, “the ’624 patent”). Bandspeed, Inc. (“Patent Owner”) did not file
`a preliminary response. Marvell and Patent Owner settled and filed a Joint
`Motion to Terminate as to Marvell (Paper 9) on June 2, 2015, which we
`granted on June 10, 2015 (Paper 11). We instituted an inter partes review of
`claims 9–12 and 21–24 on June 11, 2015 (Paper 12, “Dec.”).
`On July 13, 2015, in IPR2015-01581, Qualcomm Inc. (“Qualcomm”)
`filed a Petition (IPR2015-01581, Paper 1, “Qualcomm Pet.”) along with a
`Motion for Joinder (IPR2015-01581, Paper 2, “Mot. for Joinder”), seeking
`to join IPR2015-01581 to IPR2015-00316. On August 20, 2015, Patent
`Owner filed an Opposition to the Motion for Joinder (IPR2015-01581,
`Paper 8, “PO Opp.”). On August 31, 2015, Qualcomm filed a Reply to
`Patent Owner’s Opposition (IPR2015-01581, Paper 10, “Reply”).
`While the parties were briefing the Motion for Joinder, the MediaTek
`petitioners settled with Patent Owner and the parties to IPR2015-00316 filed
`a Motion to Terminate (Paper 17) on August 5, 2015. On September 17,
`2015, we granted the Motion to Terminate as to the MediaTek petitioners,
`but not as to Patent Owner. Paper 20, 4. We vacated the Scheduling Order
`(Paper 13) and stated that we would revisit the Motion to Terminate as to
`Patent Owner after ruling on the pending Motion for Joinder. Id. at 3–4.
`
`
`1 Unless otherwise noted, citations to papers and exhibits are to those filed in
`IPR2015-00316.
`
`2
`
`
`
`IPR2015-00316, IPR2015-01581
`Patent 7,477,624 B2
`
`
`On October 28, 2015, Patent Owner purported to file a Preliminary
`Response to Qualcomm’s Petition (IPR2015-01581, Paper 11, “Prelim.
`Resp.”). Upon inspection, the Preliminary Response does not respond to
`any of the arguments and evidence presented in the Qualcomm Petition,
`aside from indicating that absent joinder, Qualcomm would be barred from
`filing a petition under 35 U.S.C. § 315(b). The majority of Patent Owner’s
`Preliminary Response introduces new arguments in opposition to the Motion
`for Joinder. In other words, Patent Owner used the Preliminary Response as
`an unauthorized sur-reply to the Motion for Joinder. Because Patent Owner
`did not seek, nor did we grant authorization for additional briefing on the
`Motion for Joinder, we do not consider Patent Owner’s joinder arguments
`presented in the Preliminary Response. See 37 C.F.R. §§ 42.20(b) (“Prior
`authorization. A motion will not be entered without Board authorization.”);
`42.23–24 (setting forth the requirements for oppositions and replies, but not
`authorizing sur-replies).2
`For the reasons described below, we institute an inter partes review of
`all the challenged claims and grant Qualcomm’s Motion for Joinder.
`
`
`ANALYSIS
`Institution on the same grounds as those asserted in the MediaTek Petition
`Qualcomm represents that its Petition “is in all material respects the
`same as the petition in” IPR2015-00316. Mot. for Joinder 1. Qualcomm
`further represents that it “relies on the same expert declaration relied on by”
`MediaTek in IPR2015-00316. Id. The Ding Declaration submitted in
`
`
`2 As it was, we extended Patent Owner’s deadline to file its Opposition to
`the Motion for Joinder. IPR2015-01581, Paper 7.
`
`3
`
`
`
`IPR2015-00316, IPR2015-01581
`Patent 7,477,624 B2
`
`IPR2015-01581 (Ex. 1002) appears to be a copy of the declaration filed in
`IPR2015-00316 (also Ex. 1002). As explained above, while Patent Owner
`filed a paper styled a “Preliminary Response,” that paper did not address any
`of the challenges presented in Qualcomm’s Petition.
`In view of the identity of the challenges in the Qualcomm Petition and
`those of the MediaTek Petition, we institute an inter partes review in
`IPR0215-01581 on the same grounds as those on which we instituted in
`IPR2015-00316. We do not institute inter partes review on any other
`grounds.
`
`
`Joinder with IPR2015-00316
`The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125
`Stat. 284 (2011) (“AIA”) permits the joinder of like proceedings. See 35
`U.S.C. § 315(c). Under Section 315(c), the Board, acting on behalf of the
`Director, has the discretion to join an inter partes review with another inter
`partes review:
`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.
`Qualcomm’s Petition was accorded a filing date of July 13, 2015, and
`therefore satisfies the joinder requirement of being filed within one month of
`our institution of trial in IPR2015-00316. See 37 C.F.R. § 42.122(b);
`see also 37 C.F.R. § 1.7(a); 37 C.F.R. § 42.1(a). 35 U.S.C. § 315(b) further
`establishes a one-year bar from the date of service of a complaint alleging
`
`4
`
`
`
`IPR2015-00316, IPR2015-01581
`Patent 7,477,624 B2
`
`infringement for requesting inter partes review, but specifies that the bar
`does not apply to a request for joinder under § 315(c). Although Qualcomm
`filed its Petition more than one year from the date of a complaint alleging
`infringement, that Petition nevertheless is timely if we grant Qualcomm’s
`Motion for Joinder.
`Previous panels of this Board have listed factors that should be
`addressed in a motion for joinder. For example:
`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) address specifically how briefing and discovery
`may be simplified.
`Enzymotec Ltd. v. Neptune Techs. & Bioresources, Inc., Case IPR2014-
`00556, slip op. at 4 (PTAB July 9, 2014) (Paper 19) (citing Kyocera Corp. v.
`SoftView LLC, Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013)
`(Paper 15)).
`
`As explained above, Qualcomm’s Petition includes no new grounds of
`unpatentability. Qualcomm agreed in its Motion for Joinder to abide by the
`Scheduling Order existing at the time its Motion for Joinder was filed.
`Mot. for Joinder 6. Qualcomm also agreed to rely primarily on MediaTek to
`prosecute the case in order to simplify discovery and minimize the impact of
`joinder on IPR2015-00316. Id. Because the MediaTek petitioners have
`settled, there are no longer issues of cooperation and duplication among
`petitioners.
`Patent Owner opposes Qualcomm’s Motion for Joinder, arguing that
`granting it would discourage early settlement. PO Opp. 7–8. According to
`Patent Owner,
`
`5
`
`
`
`IPR2015-00316, IPR2015-01581
`Patent 7,477,624 B2
`
`
`A contrary decision would mean far fewer settlements will
`occur in multi-defendant cases until at least one month after
`institution of an IPR (possibly several months after institution if
`the original petitioner and patent owner must wait to see if
`another defendant is permitted to join after that defendant files a
`motion to join) because the patent owner will always be
`concerned that even if it settles with the original petitioner,
`another defendant will seek to join or be permitted to join the
`instituted IPR that would otherwise likely be terminated,
`depriving the patent owner of much of the value of its
`settlement with the original petitioner.
`Id. Patent Owner’s contention is speculative attorney argument unsupported
`by evidence and, therefore, is unpersuasive. Cf. Nintendo of Am., Inc. v.
`Babbage Holdings, LLC, Case IPR2015-00568, slip op. at 4–5 (PTAB
`Mar. 8, 2015) (Paper 12). We note that, in IPR2015-00316, the MediaTek
`petitioners did not oppose joinder, Mot. for Joinder 5 n.3, and Patent Owner
`was able to reach settlement with MediaTek despite the possibility of
`joinder.
`Patent Owner cites Google Inc. v. Personal Web Technologies, LLC,
`Case IPR2014-00977 (PTAB Oct. 30, 2014) (Paper 10), as an example in
`which the Board terminated an inter partes review while a motion for
`joinder was pending, rendering that motion moot. PO Opp. 5–6. Google,
`however, simply included the termination of the inter partes review as an
`alternative ground for denying a motion for joinder as moot (the panel
`denied the motion as untimely); the Google panel did not provide any
`reasoning to support Patent Owner’s argument that joinder would dissuade
`settlement. Case IPR2014-00977, slip op. at 5–6 (Paper 10).
`Patent Owner also argues that joinder would create scheduling issues.
`In particular, Patent Owner contends that Dr. Ding, the declarant on whom
`Qualcomm relies, is located in China and “it is unclear whether [Qualcomm]
`
`6
`
`
`
`IPR2015-00316, IPR2015-01581
`Patent 7,477,624 B2
`
`has also engaged Dr. Ding as an expert in IPR2015-01581 or whether it will
`be able to exert control over him to bring him to the United States prior to
`the current patent owner response deadline.” PO Opp. 9. In Reply,
`Qualcomm represents that it has engaged Dr. Ding and is able to present him
`for deposition. Reply 4. Such cross-examination is part of routine
`discovery. See 37 C.F.R. § 42.51(b)(1)(ii); Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,761 (Aug. 14, 2012).
`Patent Owner also contends that joinder would require significant
`adjustment to the schedule and would compromise our ability to meet the
`deadline of 35 U.S.C. § 316(a)(11). PO Opp. 9–10. The Enzymotec panel
`noted “a policy preference for joining a party that does not present new
`issues that might complicate or delay an existing proceeding.” Case
`IPR2014-00556, slip op. at 6 (Paper 19) (citing 157 CONG. REC. S1376
`(daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office anticipates that
`joinder will be allowed as of right – if an inter partes review is instituted on
`the basis of a petition, for example, a party that files an identical petition will
`be joined to that proceeding, and thus allowed to file its own briefs and make
`its own arguments.”)).
`In this proceeding, Qualcomm stated a willingness to cooperate with
`the MediaTek petitioners and follow the schedule originally set in IPR2015-
`00316. Mot. for Joinder 5–6. To that effect, Qualcomm filed an identical
`petition and agreed to follow the MediaTek petitioners’ lead. Id. at 6.
`Qualcomm took the steps our cases counsel to minimize the impact of
`joinder on our goal of securing a just, speedy, and inexpensive resolution.
`But for settlement between the MediaTek petitioners and Patent Owner,
`IPR2015-00316 presumably would have followed the originally ordered
`
`7
`
`
`
`IPR2015-00316, IPR2015-01581
`Patent 7,477,624 B2
`
`schedule, joinder notwithstanding. Paper 20, 4. In any case, 35 U.S.C.
`§ 316(11) permits us to adjust the time period for a final written decision in
`the case of joinder. See also 37 C.F.R. § 42.100(c).
`In sum, we are not persuaded that joinder in this case will, as a policy
`matter, discourage settlement. Nor are we persuaded that joinder will
`undermine our ability to secure a just, speedy, and inexpensive resolution of
`the parties’ dispute. Qualcomm has persuaded us that joinder is appropriate
`in this case. In consideration of the above, we institute an inter partes
`review in IPR2015-01581 and grant Qualcomm’s motion to join that
`proceeding to IPR2015-00316.
`As to the Motion to Terminate (Paper 17), 35 U.S.C. § 317(a) states
`“[i]f no petitioner remains in the inter partes review, the Office may
`terminate the review or proceed to a final written decision under section
`318(a).” Because Qualcomm remains a petitioner, we do not terminate
`IPR2015-00316.
`
`
`ORDER
`ORDERED that IPR2015-01581 is instituted and joined with
`IPR2015-00316;
`FURTHER ORDERED that the grounds on which IPR2015-00316
`was instituted are unchanged and no other grounds are instituted in the
`joined proceeding;
`FURTHER ORDERED that IPR2015-01581 is terminated under 37
`C.F.R. § 42.72 and all further filings in the joined proceeding are to be made
`in IPR2015-00316;
`
`8
`
`
`
`IPR2015-00316, IPR2015-01581
`Patent 7,477,624 B2
`
`
`FURTHER ORDERED that the case caption in IPR2014-00316 shall
`be changed to reflect joinder with this proceeding in accordance with the
`attached example; and
`
`FURTHER ORDERED that the Motion to Terminate (Paper 17) is
`denied as to Patent Owner.
`
`
`
`
`
`9
`
`
`
`IPR2015-00316, IPR2015-01581
`Patent 7,477,624 B2
`
`PETITIONER:
`
`Lori A. Gordon
`Robert E. Sokohl
`Jeffrey T. Helvey
`STERNE, KESSLER, GOLDSTEIN & FOX
`lgordon-PTAB@skgf.com
`rsokohl-PTAB@skgf.com
`jhelvey-PTAB@skgf.com
`
`Nathan Rees
`Richard S. Zembek
`Eric Hall
`R. Ross Viguet
`NORTON ROSE FULBRIGHT US LLP
`nate.rees@nortonrosefulbright.com
`richard.zembek@nortonrosefulbright.com
`eric.hall@nortonrosefulbright.com
`ross.viguet@nortonrosefulbright.com
`
`PATENT OWNER:
`
`Gregory S. Donahue
`DiNOVO PRICE ELLWANGER & HARDY LLP
`gdonahue@dpelaw.com
`docketing@dpelaw.com
`
`David O. Simmons
`IVC PATENT AGENCY
`dsimmons1@sbcglobal.net
`
`
`10
`
`
`
`
`
`
`
`Example Case Caption for Joined Proceeding
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`QUALCOMM INC.,
`Petitioner,
`
`v.
`
`BANDSPEED, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-003161
`Patent 7,477,624 B2
`
`
`
`
`
`
`
`
`1 Case IPR2015-01581 has been joined with this proceeding.
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