throbber
Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 14
`Entered: February 23, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE (USA) INC.,
` Petitioner,
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01349
`Patent 8,218,481 B2
`____________
`
`Before WILLIAM V. SAINDON, PETER P. CHEN, and
`TERRENCE W. McMILLIN, Administrative Patent Judges
`
`McMILLIN, Administrative Patent Judge
`
`
`Decision
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
`
`
`

`

`IPR2016-01349
`Patent 8,218,481 B2
`
`
`I.
`INTRODUCTION
`Petitioner, ZTE (USA) Inc. (“ZTE”), requested joinder of this
`proceeding with IPR2016-00981. Patent Owner, Evolved Wireless LLC
`(“Evolved Wireless”), does not oppose joinder. For the reasons given
`below, we grant the motion for joinder.
`II. GRANT OF MOTION FOR JOINDER
`On July 5, 2016, ZTE filed a Petition requesting an inter partes
`review of claims 1–4, 6, 8–11, 13, 15, and 16 of U.S. Patent No. 8,218,481
`B2 (Ex. 1001, “the ’481 patent”). Paper 2. On January 12, 2017, the Board
`instituted trial on all the challenged claims. Paper 11.
`On December 5, 2016, ZTE filed a “Motion for Joinder Under
`35 U.S.C. § 315(c) and/or Consolidation under § 315(d) with Case No.
`IPR2016-00981.” Paper 8 (“Motion for Joinder”). On December 19, 2016,
`Evolved Wireless filed “Patent Owner’s Opposition to Petitioner’s Motion
`for Joiner and/or Consolidation with Case No. IPR2016-00981.” On
`December 29, 2016, we received a communication which stated that ZTE
`has filed a motion to consolidate and/or join IPR2016-00981 with IPR2016-
`01349, and that Patent Owner has confirmed that it would not oppose joinder
`if the Board institutes in IPR2016-001349. Paper 9. On January 12, 2017,
`ZTE filed its “Reply in Support of Petitioner’s Motion for Joinder and/or
`Consolidation with Case No. IPR2016-00981” which stated:
`Petitioner’s joinder/consolidation motion (Paper 8) is now
`unopposed. Specifically after filing its opposition (Paper 9),
`Patent Owner represented that if the Board institutes an IPR in
`this proceeding
`then Patent Owner would not oppose
`joinder/consolidation with the instituted proceeding in IPR2016-
`00981. (Paper 10 at 2–3; 12/29/16 C. McMahon E-Mail to
`Board.) Today the Board instituted an IPR in the present
`
`

`

`IPR2016-01349
`Patent 8,218,481 B2
`
`
`proceeding (Paper 11). Therefore, the Board should join or
`consolidate the present proceeding with IPR2016-00981.
`
`Paper 13, 1. Thus, although Evolved Wireless previously indicated it
`opposed joinder (Paper 9), the Board understands that Evolved Wireless
`currently does not oppose joinder (Paper 13).
`The Motion for Joinder was timely because joinder was requested no
`later than one month after the institution date of IPR2016-00981, i.e.,
`November 3, 2016.1 See 37 C.F.R. § 42.122(b).
`The statutory provision governing joinder in inter partes review
`proceedings is 35 U.S.C. § 315(c), which reads:
`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.
`
`
`By regulation, the Director’s discretion has been delegated to the board.
`37 C.F.R. § 42.4(a). A motion for joinder should generally (1) set forth
`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. ZTE’s
`Motion for Joinder addresses each of the above factors. Motion for Joinder
`6–10. ZTE argues:
`The ZTE petition [in this proceeding] challenges the same claims
`and relies on the same arguments, same evidence including the
`
`1 December 3, 2016, was a Saturday and December 4, 2016, was a Sunday.
`
`

`

`IPR2016-01349
`Patent 8,218,481 B2
`
`
`same expert declaration, and substantively identical prior art as
`those presented in the Apple/Microsoft proceeding [IPR2016-
`00981]. Indeed, as Patent Owner acknowledges, the only
`relevant difference between ZTE’s petition and
`the
`Apple/Microsoft petition is that the ZTE petition uses the Tan
`patent, rather than the Tan provisional, as a secondary reference
`in order to correct a minor procedural defect. See Paper 7 at 16.
`
`
`Motion for Joinder 6. In IPR2016-0981, the Petitioners, Apple Inc.,
`Microsoft Corporation, Microsoft Mobile Oy, and Microsoft Mobile, Inc.
`(“Apple and Microsoft”), relied on a US provisional patent application in
`challenging dependent claims 2–4, 6, 9–11 of the ’481 patent. IPR2016-
`00981, Paper 4, 4–5. As US provisional patent applications are not prior art,
`the Board did not institute trial on dependent claims 2–4, 6, 9–11 of the ’481
`patent. IPR2016-00981, Paper 10, 20–21. In this proceeding, ZTE relies on
`US Patent No. 8,800,305 B2 (the “Tan patent”) in challenging claims 2–4, 6,
`9–11 of the ’481 patent (Paper 2, 6). In this proceeding, Evolved Wireless
`did not separately address ZTE’s challenge to claims 2–4, 6, 9–11 (see
`generally Prelim. Resp.) and the Board instituted trial on those dependent
`claims (Paper 11, 26).
`If joinder is granted, ZTE anticipates participating in the proceeding
`in a limited capacity. Motion for Joinder 1 (“ZTE . . . agrees to accept a
`limited role, with counsel for Apple and Microsoft acting as the lead
`counsel.”). ZTE agrees to:
`(1) consolidate filings with Apple and Microsoft; (2) refrain from
`raising any new grounds not already considered by the Board in
`the Apple/Microsoft proceeding [IPR2016-00981]; (3) be bound
`by any agreement between Patent Owner and Apple and
`Microsoft concerning discovery and/or depositions; (4) limit any
`direct, cross-examination or redirect time beyond that permitted
`
`

`

`IPR2016-01349
`Patent 8,218,481 B2
`
`
`for Apple and Microsoft under either 37 C.F.R. § 42.53 or any
`agreement between Apple and Microsoft and the Patent Owner,
`such that Petitioner’s participation in the Apple/Microsoft
`proceeding does not result in any additional time being required
`for any deposition; and (5) limit any presentation at oral hearing
`to unused time previously allocated to Apple and Microsoft.
`
`Id. at 8–9.
`
`With regard to the trial schedule, joinder will require modification of
`the schedules entered in IPR2016-00981 and this proceeding. We have the
`authority to modify the schedule including the 1 year final determination
`time period. See 35 U.S.C. § 316(a)(11); 37 C.F.R. § 42.100(c). We note
`that Evolved Wireless has withdrawn its opposition to joinder and that all
`the parties to this proceeding and IPR2016-00981 have agreed to a modified
`schedule which we adopt in the Revised Scheduling Order being entered on
`the same day as this Decision.
`On the record before us, in particular the agreement between the
`parties, and having weighed the factors related to joinder, we exercise our
`discretion to granting the Motion for Joinder. As the more complete record
`exists in this proceeding, especially relating to the Tan patent, we order that
`the Petitioners in IPR2016-00981 shall be added as parties to this proceeding
`and this proceeding shall continue after joinder.
`
`
`
`

`

`IPR2016-01349
`Patent 8,218,481 B2
`
`
`III. ORDER
`
`It is hereby:
`ORDERED that the Motion for Joinder with IPR2016-00981 is
`granted;
`FURTHER ORDERED that Apple Inc., Microsoft Corporation,
`Microsoft Mobile Oy, and Microsoft Mobile, Inc. are joined as petitioners in
`IPR2016-01349;
` FURTHER ORDERED that the grounds for trial in IPR2016-01349
`remain unchanged;
`FURTHER ORDERED that the case caption in IPR2016-01349 shall
`be changed to reflect joinder of Apple Inc., Microsoft Corporation,
`Microsoft Mobile Oy, and Microsoft Mobile, Inc. as petitioners;
`FURTHER ORDERED that the Revised Scheduling Order entered in
`the consolidated IPR2016-007582 shall supersede the scheduling orders in
`IPR2016-00981 (Paper 11) and IPR2016-01349 (Paper 12); and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2016-00981.
`
`
`
`2 IPR2016-01349 is being consolidated with IPR2016-00758 and IPR2016-
`01342 which also relate to the ’481 patent.
`
`

`

`IPR2016-01349
`Patent 8,218,481 B2
`
`PETITIONER:
`
`Charles M. McMahon
`Hersh H. Mehta
`MCDERMOTT WILL & EMERY
`cmcmahon@mwe.com
`hmehta@mwe.com
`
`W. Karl Renner
`Roberto J. Devoto
`FISH & RICHARDSON P.C.
`IPR00035-0010IP1@fr.com
`PTABInbound@fr.com
`
`PATENT OWNER:
`
`Cyrus Morton
`Ryan Schultz
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`rschultz@robinskaplan.com
`evolved_rk_team@robinskaplan.com
`
`
`
`
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket