`Entered: November 16, 2015
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`Trials@uspto.gov
`571-272-7822
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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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`QUALCOMM INC.,
`Petitioner,
`
`v.
`
`BANDSPEED, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00531,
`Case IPR2015-01582
`Patent 8,542,643 B2
`____________
`
`
`
`Before BART A. GERSTENBLITH, DAVID C. McKONE, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`McKONE, Administrative Patent Judge.
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`
`
`DECISION
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`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F.R. § 42.122(b)
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`
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`IPR2015-00531, IPR2015-01582
`Patent 8,542,643 B2
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`
`INTRODUCTION
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`In IPR2015-00531, Marvell Semiconductor, Inc. (“Marvell”),
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`MediaTek Inc., and MediaTek USA, Inc. (collectively, “MediaTek
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`petitioners”) filed a Petition (Paper 4, “MediaTek Pet.”)1 to institute inter
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`partes review of claims 1–15 of U.S. Patent No. 8,542,643 B2 (Ex. 1001,
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`“the ’643 patent”). Bandspeed, Inc. (“Patent Owner”) did not file a
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`preliminary response. Marvell and Patent Owner settled and filed a Joint
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`Motion to Terminate as to Marvell (Paper 9) on June 2, 2015, which we
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`granted on June 10, 2015 (Paper 11). We instituted an inter partes review of
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`claims 1–15 on June 11, 2015 (Paper 12, “Dec.”).
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`On July 13, 2015, in IPR2015-01582, Qualcomm Inc. (“Qualcomm”)
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`filed a Petition (IPR2015-01582, Paper 1, “Qualcomm Pet.”) along with a
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`Motion for Joinder (IPR2015-01582, Paper 3, “Mot. for Joinder”), seeking
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`to join IPR2015-01582 to IPR2015-00531. On August 20, 2015, Patent
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`Owner filed an Opposition to the Motion for Joinder (IPR2015-01582,
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`Paper 8, “PO Opp.”). On August 31, 2015, Qualcomm filed a Reply to
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`Patent Owner’s Opposition (IPR2015-01582, Paper 10, “Reply”).
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`While the parties were briefing the Motion for Joinder, the MediaTek
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`petitioners settled with Patent Owner and the parties to IPR2015-00531 filed
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`a Motion to Terminate (Paper 17) on August 5, 2015. On September 17,
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`2015, we granted the Motion to Terminate as to the MediaTek petitioners,
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`but not as to Patent Owner. Paper 20, 4. We vacated the Scheduling Order
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`(Paper 13) and stated that we would revisit the Motion to Terminate as to
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`Patent Owner after ruling on the pending Motion for Joinder. Id. at 3–4.
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`1 Unless otherwise noted, citations to papers and exhibits are to those filed in
`IPR2015-00531.
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`2
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`
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`IPR2015-00531, IPR2015-01582
`Patent 8,542,643 B2
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`On October 28, 2015, Patent Owner purported to file a Preliminary
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`Response to Qualcomm’s Petition (IPR2015-01582, Paper 11, “Prelim.
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`Resp.”). Upon inspection, the Preliminary Response does not respond to
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`any of the arguments and evidence presented in the Qualcomm Petition,
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`aside from indicating that absent joinder, Qualcomm would be barred from
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`filing a petition under 35 U.S.C. § 315(b). The majority of Patent Owner’s
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`Preliminary Response introduces new arguments in opposition to the Motion
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`for Joinder. In other words, Patent Owner used the Preliminary Response as
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`an unauthorized sur-reply to the Motion for Joinder. Because Patent Owner
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`did not seek, nor did we grant authorization for additional briefing on the
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`Motion for Joinder, we do not consider Patent Owner’s joinder arguments
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`presented in the Preliminary Response. See 37 C.F.R. §§ 42.20(b) (“Prior
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`authorization. A motion will not be entered without Board authorization.”);
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`42.23–24 (setting forth the requirements for oppositions and replies, but not
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`authorizing sur-replies).2
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`For the reasons described below, we institute an inter partes review of
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`all the challenged claims and grant Qualcomm’s Motion for Joinder.
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`
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`ANALYSIS
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`Institution on the same grounds as those asserted in the MediaTek Petition
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`Qualcomm represents that its Petition “is in all material respects the
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`same as the petition in” IPR2015-00531. Mot. for Joinder 1. Qualcomm
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`further represents that it “relies on the same expert declaration relied on by”
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`MediaTek in IPR2015-00531. Id. The Ding Declaration submitted in
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`2 As it was, we extended Patent Owner’s deadline to file its Opposition to
`the Motion for Joinder. IPR2015-01582, Paper 7.
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`3
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`IPR2015-00531, IPR2015-01582
`Patent 8,542,643 B2
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`IPR2015-01582 (Ex. 1002) appears to be a copy of the declaration filed in
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`IPR2015-00531 (also Ex. 1002). As explained above, while Patent Owner
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`filed a paper styled a “Preliminary Response,” that paper did not address any
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`of the challenges presented in Qualcomm’s Petition.
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`In view of the identity of the challenges in the Qualcomm Petition and
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`those of the MediaTek Petition, we institute an inter partes review in
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`IPR0215-01582 on the same grounds as those on which we instituted in
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`IPR2015-00531. We do not institute inter partes review on any other
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`grounds.
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`Joinder with IPR2015-00531
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`The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125
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`Stat. 284 (2011) (“AIA”) permits the joinder of like proceedings. See 35
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`U.S.C. § 315(c). Under Section 315(c), the Board, acting on behalf of the
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`Director, has the discretion to join an inter partes review with another inter
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`partes review:
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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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`Qualcomm’s Petition was accorded a filing date of July 13, 2015, and
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`therefore satisfies the joinder requirement of being filed within one month of
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`our institution of trial in IPR2015-00531. See 37 C.F.R. § 42.122(b);
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`see also 37 C.F.R. § 1.7(a); 37 C.F.R. § 42.1(a). 35 U.S.C. § 315(b) further
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`establishes a one-year bar from the date of service of a complaint alleging
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`4
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`IPR2015-00531, IPR2015-01582
`Patent 8,542,643 B2
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`infringement for requesting inter partes review, but specifies that the bar
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`does not apply to a request for joinder under § 315(c). Although Qualcomm
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`filed its Petition more than one year from the date of a complaint alleging
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`infringement, that Petition nevertheless is timely if we grant Qualcomm’s
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`Motion for Joinder.
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`Previous panels of this Board have listed factors that should be
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`addressed in a motion for joinder. For example:
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`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.
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`Enzymotec Ltd. v. Neptune Techs. & Bioresources, Inc., Case IPR2014-
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`00556, slip op. at 4 (PTAB July 9, 2014) (Paper 19) (citing Kyocera Corp. v.
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`SoftView LLC, Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013)
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`(Paper 15)).
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`As explained above, Qualcomm’s Petition includes no new grounds of
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`unpatentability. Qualcomm agreed in its Motion for Joinder to abide by the
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`Scheduling Order existing at the time its Motion for Joinder was filed.
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`Mot. for Joinder 6. Qualcomm also agreed to rely primarily on MediaTek to
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`prosecute the case in order to simplify discovery and minimize the impact of
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`joinder on IPR2015-00531. Id. Because the MediaTek petitioners have
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`settled, there are no longer issues of cooperation and duplication among
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`petitioners.
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`Patent Owner opposes Qualcomm’s Motion for Joinder, arguing that
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`granting it would discourage early settlement. PO Opp. 7–8. According to
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`Patent Owner,
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`5
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`IPR2015-00531, IPR2015-01582
`Patent 8,542,643 B2
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`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.
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`Id. Patent Owner’s contention is speculative attorney argument unsupported
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`by evidence and, therefore, is unpersuasive. Cf. Nintendo of Am., Inc. v.
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`Babbage Holdings, LLC, Case IPR2015-00568, slip op. at 4–5 (PTAB
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`Mar. 8, 2015) (Paper 12). We note that, in IPR2015-00531, the MediaTek
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`petitioners did not oppose joinder, Mot. for Joinder 5 n.3, and Patent Owner
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`was able to reach settlement with MediaTek despite the possibility of
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`joinder.
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`Patent Owner cites Google Inc. v. Personal Web Technologies, LLC,
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`Case IPR2014-00977 (PTAB Oct. 30, 2014) (Paper 10), as an example in
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`which the Board terminated an inter partes review while a motion for
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`joinder was pending, rendering that motion moot. PO Opp. 5–6. Google,
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`however, simply included the termination of the inter partes review as an
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`alternative ground for denying a motion for joinder as moot (the panel
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`denied the motion as untimely); the Google panel did not provide any
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`reasoning to support Patent Owner’s argument that joinder would dissuade
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`settlement. Case IPR2014-00977, slip op. at 5–6 (Paper 10).
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`Patent Owner also argues that joinder would create scheduling issues.
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`In particular, Patent Owner contends that Dr. Ding, the declarant on whom
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`Qualcomm relies, is located in China and “it is unclear whether [Qualcomm]
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`6
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`IPR2015-00531, IPR2015-01582
`Patent 8,542,643 B2
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`has also engaged Dr. Ding as an expert in IPR2015-01582 or whether it will
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`be able to exert control over him to bring him to the United States prior to
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`the current patent owner response deadline.” PO Opp. 9. In Reply,
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`Qualcomm represents that it has engaged Dr. Ding and is able to present him
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`for deposition. Reply 4. Such cross-examination is part of routine
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`discovery. See 37 C.F.R. § 42.51(b)(1)(ii); Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48,756, 48,761 (Aug. 14, 2012).
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`Patent Owner also contends that joinder would require significant
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`adjustment to the schedule and would compromise our ability to meet the
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`deadline of 35 U.S.C. § 316(a)(11). PO Opp. 9–10. The Enzymotec panel
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`noted “a policy preference for joining a party that does not present new
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`issues that might complicate or delay an existing proceeding.” Case
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`IPR2014-00556, slip op. at 6 (Paper 19) (citing 157 CONG. REC. S1376
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`(daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office anticipates that
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`joinder will be allowed as of right – if an inter partes review is instituted on
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`the basis of a petition, for example, a party that files an identical petition will
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`be joined to that proceeding, and thus allowed to file its own briefs and make
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`its own arguments.”)).
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`In this proceeding, Qualcomm stated a willingness to cooperate with
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`the MediaTek petitioners and follow the schedule originally set in IPR2015-
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`00531. Mot. for Joinder 5–6. To that effect, Qualcomm filed an identical
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`petition and agreed to follow the MediaTek petitioners’ lead. Id. at 6.
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`Qualcomm took the steps our cases counsel to minimize the impact of
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`joinder on our goal of securing a just, speedy, and inexpensive resolution.
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`But for settlement between the MediaTek petitioners and Patent Owner,
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`IPR2015-00531 presumably would have followed the originally ordered
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`7
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`IPR2015-00531, IPR2015-01582
`Patent 8,542,643 B2
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`schedule, joinder notwithstanding. Paper 20, 4. In any case, 35 U.S.C.
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`§ 316(11) permits us to adjust the time period for a final written decision in
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`the case of joinder. See also 37 C.F.R. § 42.100(c).
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`In sum, we are not persuaded that joinder in this case will, as a policy
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`matter, discourage settlement. Nor are we persuaded that joinder will
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`undermine our ability to secure a just, speedy, and inexpensive resolution of
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`the parties’ dispute. Qualcomm has persuaded us that joinder is appropriate
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`in this case. In consideration of the above, we institute an inter partes
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`review in IPR2015-01582 and grant Qualcomm’s motion to join that
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`proceeding to IPR2015-00531.
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`As to the Motion to Terminate (Paper 17), 35 U.S.C. § 317(a) states
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`“[i]f no petitioner remains in the inter partes review, the Office may
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`terminate the review or proceed to a final written decision under section
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`318(a).” Because Qualcomm remains a petitioner, we do not terminate
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`IPR2015-00531.
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`ORDERED that IPR2015-01582 is instituted and joined with
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`ORDER
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`IPR2015-00531;
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`FURTHER ORDERED that the grounds on which IPR2015-00531
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`was instituted are unchanged and no other grounds are instituted in the
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`joined proceeding;
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`FURTHER ORDERED that IPR2015-01582 is terminated under 37
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`C.F.R. § 42.72 and all further filings in the joined proceeding are to be made
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`in IPR2015-00531;
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`8
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`IPR2015-00531, IPR2015-01582
`Patent 8,542,643 B2
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`FURTHER ORDERED that the case caption in IPR2014-00531 shall
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`be changed to reflect joinder with this proceeding in accordance with the
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`attached example; and
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`FURTHER ORDERED that the Motion to Terminate (Paper 17) is
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`denied as to Patent Owner.
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`9
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`IPR2015-00531, IPR2015-01582
`Patent 8,542,643 B2
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`FOR PETITIONER:
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`Nathan Rees
`Nate.rees@nortonrosefulbright.com
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`Richard S. Zembek
`Richard.zembek@nortonrosefulbright.com
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`R. Ross Viguet
`Ross.viguet@nortonrosefulbright.com
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`FOR PATENT OWNER:
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`Gregory Donahue
`gdonahue@dpelaw.com
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`David Simmons
`Dsimmons1@sbcglobal.net
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`10
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`Example Case Caption for Joined Proceeding
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`QUALCOMM INC.,
`Petitioner,
`
`v.
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`BANDSPEED, INC.,
`Patent Owner.
`____________
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`Case IPR2015-005311
`Patent 8,542,643 B2
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`1 Case IPR2015-01582 has been joined with this proceeding.