throbber
Paper No. 11
`Entered: February 23, 2017
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC., MICROSOFT CORPORATION, MICROSOFT MOBILE
`OY, and MICROSOFT MOBILE INC.,
`Petitioner,
`
`
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`
`____________
`
`Case IPR2017-00068
`Patent 8,218,481 B2
`____________
`
`
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, 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)
`
`
`

`

`Case IPR2017-00068
`Patent No. 8,218,481 B2
`
`
`I.
`INTRODUCTION
`Apple, Inc., Microsoft Corporation, Microsoft Mobile Oy, and
`Microsoft Mobile, Inc. (f/k/a Nokia Inc.) (“Apple and Microsoft”) filed a
`Petition requesting an inter partes review of claims 1–4, 6, 8–11, and 13 of
`U.S. Patent No. 8,218,481 B2 (Ex. 1001, “the ’481 patent”). Paper 2
`(“Pet.”). Concurrently with the Petition, Apple and Microsoft filed a Motion
`for Joinder with ZTE (USA) Inc., HTC Corporation, and HTC America, Inc.
`v. Evolved Wireless, LLC, Case IPR2016-00758. Paper 3. On December 30,
`2016, Apple and Microsoft filed a Supplemental Reply to Patent Owner’s
`Opposition to Motion for Joinder, which states:
`Petitioner hereby expressly dismisses its petition as to claims 4
`and 11 of the ’481 patent, which were not instituted in IPR2016-
`00758. Notably, Petitioner does not abandon any grounds in its
`petition directed to the claims that were instituted in IPR2016-
`00758.
`
`Petitioner’s Motion for Joinder stands unopposed (Paper
`No. 13, “Counsel for Patent Owner agreed that, if the non-
`instituted claims are dismissed for the Petitions in the joinder
`cases, Patent Owner does not oppose joinder of Petitioners to
`IPR2016-00758.”) Petitioner thus requests that the Board
`institute an IPR on the remaining grounds in the present case and
`grant Petitioner’s Motion for Joinder to IPR2016-00758 with
`respect to the instituted grounds.
`
`Paper 10, 1.
`
`Patent Owner, Evolved Wireless, LLC (“Evolved Wireless”), has not
`filed a preliminary response to the Petition.1 Evolved Wireless filed an
`opposition to the Motion for Joinder (Paper 7) but since has withdrawn its
`
`
`1 The preliminary response was due on January 25, 2017. Paper 6, 2.
`
`
`
`2
`
`

`

`Case IPR2017-00068
`Patent No. 8,218,481 B2
`
`opposition. For the reasons explained below, we grant the Motion for
`Joinder.
`
`II.
`
`THE PETITION WARRANTS INSTITUTION
`OF INTER PARTES REVIEW
`According to Apple and Microsoft, the Petition in this proceeding
`“substantively copies the petition in co-pending IPR2016-00758” (Pet. 1)
`and “includes only the grounds filed in IPR2016-00758 and is substantively
`identical on those grounds.” Paper 3, 1. For the reasons set forth in our
`institution decision, Paper 12, in IPR2016-00758, we determine that the
`information presented in the Petition establishes there is a reasonable
`likelihood that Apple and Microsoft will prevail in showing claims 1–3, 6,
`8–10, and 13 of the ’481 patent are unpatentable.
`III. GRANT OF MOTION FOR JOINDER
`The Petition and Motion for Joinder in this proceeding were accorded
`a filing date of October 14, 2016. See Paper 6. Thus, the Motion for Joinder
`was timely because joinder was requested no later than one month after the
`institution date of IPR2016-00758, i.e., September 16, 2016. 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.
`
`
`
`
`
`3
`
`

`

`Case IPR2017-00068
`Patent No. 8,218,481 B2
`
`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.
`As noted, the Petition herein asserts the same unpatentability grounds
`on which we instituted trial in IPR2016-00758. See Paper 3, 1. Apple and
`Microsoft also rely on the same prior art analysis and expert testimony
`submitted by the Petitioner in IPR2016-00758. See id. at 4. Indeed, the
`instant Petition is nearly identical to the Petition in IPR2016-00758 with
`respect to the grounds on which trial was instituted. See id. Thus, this inter
`partes review does not present any ground or matter not already at issue in
`IPR2016-00758.
`If joinder is granted, Apple and Microsoft anticipate participating in
`the proceeding in a limited capacity. Id. at 4, 6–7. Apple and Microsoft agree
`to:
`
`take an “understudy” role as petitioners in other, similarly joined
`proceedings have taken. In other words, so long as ZTE and
`HTC maintain their IPR, all filings by Petitioner in the joined
`proceeding will be consolidated with the filings of ZTE and
`HTC, unless a filing solely concerns issues that do not involve
`ZTE or HTC; Petitioner will not introduce any argument or
`discovery not introduced by ZTE and HTC; and Petitioner
`assents to ZTE and HTC leading any depositions associated with
`the joined proceeding. Thus, if joined, there will be only one set
`of briefing on the issues, rather than briefing from both ZTE and
`HTC and Petitioner. Petitioner will assume the primary role only
`if ZTE and HTC cease to participate.
`
`
`
`
`4
`
`

`

`Case IPR2017-00068
`Patent No. 8,218,481 B2
`
`Id.
`With regard to the trial schedule, joinder will require modification of
`
`the schedule entered in IPR2016-00758 (see Paper 13 (Scheduling Order) as
`modified (see Papers 15, 21, 22, and 23). The Board has the authority to
`modify the schedule, including the 1 year final determination time period.
`See 35 U.S.C. § 316(a)(11). We note that Evolved Wireless has withdrawn
`its opposition to joinder and that all the parties to this proceeding and
`IPR2016-00758 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 grant the Motion for Joinder.
`IV. ORDER
`
`It is hereby:
`ORDERED that the Motion for Joinder with IPR2016-00758 is
`granted;
`FURTHER ORDERED that Apple, Inc., Microsoft Corporation,
`Microsoft Mobile Oy, and Microsoft Mobile, Inc. (f/k/a Nokia Inc.) are
`joined as petitioners in IPR2016-00758;
` FURTHER ORDERED that the grounds for trial in IPR2016-00758
`remain unchanged;
`FURTHER ORDERED that the case caption in IPR2016-00758 shall
`be changed to reflect joinder of Apple and Microsoft;
`FURTHER ORDERED that the Revised Scheduling Order entered in
`the consolidated IPR2016-00758 shall replace the original Scheduling Order
`
`
`
`5
`
`

`

`Case IPR2017-00068
`Patent No. 8,218,481 B2
`
`(Paper 13) as modified (Papers 15, 21, 22, and 23), and IPR2016-00758
`shall proceed in accordance with the Revised Scheduling Order; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2016-00758.
`
`
`
`6
`
`

`

`Case IPR2017-00068
`Patent No. 8,218,481 B2
`
`PETITIONER:
`
`W. Karl Renner
`Roberto J. Devoto
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`devoto@fr.com
`
`Charles M. McMahon
`Hersh H. Mehta
`MCDERMOTT WILL & EMERY
`cmcmahon@mwe.com
`hmehta@mwe.com
`
`Stephen S. Korniczky
`Martin Bader
`Ericka J. Schulz
`SHEPPARD, MULLIN, RICHTER & HAMPTON, LLP
`skorniczky@sheppardmullin.com
`mbader@sheppardmullin.com
`eschulz@sheppardmullin.com
`
`PATENT OWNER:
`
`Cyrus Morton
`Ryan Schultz
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`rschultz@robinskaplan.com
`
`
`
`
`
`7
`
`

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