Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 12
`Entered: May 2, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARRIS GROUP, INC.,
`Petitioner,
`
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Cases1
`IPR2016-00765 (Patent 5,915,210)
`IPR2016-00766 (Patent 5,659,891)
`
`
`
`
`Before MEREDITH C. PETRAVICK, SCOTT A. DANIELS, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`Petitioner requested, by an email dated April 15, 2016, a conference
`call with the Board seeking authorization to file a motion for expedited
`
`1 This Order addresses issues that are the same in both cases. Therefore, we
`exercise our discretion to issue one Decision to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`1
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 12
`Entered: May 2, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARRIS GROUP, INC.,
`Petitioner,
`
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Cases1
`IPR2016-00765 (Patent 5,915,210)
`IPR2016-00766 (Patent 5,659,891)
`
`
`
`
`Before MEREDITH C. PETRAVICK, SCOTT A. DANIELS, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`Petitioner requested, by an email dated April 15, 2016, a conference
`call with the Board seeking authorization to file a motion for expedited
`
`1 This Order addresses issues that are the same in both cases. Therefore, we
`exercise our discretion to issue one Decision to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`1
`
`
`
`
`
`IPR2016-00765 (Patent 5,915,210)
`IPR2016-00766 (Patent 5,659,891)
`action on the Motion for Joinder (Paper 5) filed with the respective Petitions
`in these proceedings. Petitioner stated in the email that their request was
`based on motions to terminate filed in IPR2015-01724 and IPR2015-01726
`(the “Samsung IPR’s”), with which Petitioner seeks to join the present
`proceedings.2 Patent Owner indicated in a separate email dated April 17,
`2016, that it would oppose Petitioner’s motions for joinder.
`The Board conducted a telephone conference with the parties on April
`20, 2016. Included on the call in addition to counsel in these proceedings
`and the Samsung IPR’s, were Judges Daniels, Petravick and Quinn. A court
`reporter provided by Petitioner’s counsel was also on the call.3 Petitioner
`argued during the call that the Board has authority under 35 U.S.C.
`§42.5(c)(1) to modify Patent Owner’s preliminary response date in order to
`determine, at an earlier time, whether trial should be instituted in these
`proceedings. Tr. 6–10. Assuming a trial would be instituted in these
`proceedings, Petitioner contends that the Board should then join these
`proceedings with the Samsung IPR’s before the Board considers termination
`of the Samsung IPR’s. Id. at 6. Petitioner argues that expedited
`consideration of joinder is appropriate because the petitions in these
`proceedings are copies of the petitions in the Samsung IPR’s, the motions
`for joinder were timely filed, and that consolidation of the proceedings
`reduces cost and complexities for the parties and the Board. Id. at 9–10. In
`other words, assuming we were to expedite these proceedings and grant
`joinder, and then subsequently grant the motions for termination in the
`
`
`2 In each of the Samsung IPR’s the parties filed a Joint Motion to Terminate
`on April 14, 2015, indicating that the parties have settled their dispute and
`agreed to terminate the Samsung IPR’s.
`3 The transcript of the call is entered into the record as Exhibit 1016 (“Tr.”).
`
`
`
`IPR2016-00765 (Patent 5,915,210)
`IPR2016-00766 (Patent 5,659,891)
`Samsung IPR’s, as Petitioner requests, Petitioner would then essentially
`stand in the shoes of Samsung and these proceedings would be subject to the
`Samsung IPR trial schedule.
`Patent Owner opposes the request because, among other reasons, the
`seven month gap between the filing of the relevant Petitions, and moving
`Patent Owner’s date to file its preliminary response would be prejudicial
`primarily to Patent Owner. Id. at 11–15. Additionally, although Petitioner
`has copied the petitions from the Samsung IPR’s, Patent Owner’s counsel
`indicated during the call that Patent Owner intends to provide a different
`preliminary response in these proceedings than in the Samsung IPR’s. Id. at
`13. Further, the recent amendments to 37 C.F.R. Part 42, which became
`effective May 2, 2016, permit Patent Owner to include testimonial evidence
`in their preliminary response, which is different from the Samsung IPR’s.
`More persuasive than the additional burden to Patent Owner, the
`potential synchronization of these proceedings leaves Samsung and Patent
`Owner, who have settled their dispute and undertaken the appropriate steps
`to terminate the Samsung IPR’s, with their proceedings unresolved for a
`significant period of time. This period of time in which the outcome of the
`Samsung IPR’s remains unclear includes not only the time for Patent Owner
`to file a preliminary response but also the length of time in which the Board
`has to consider and write a decision. See 35 U.S.C. 314(b). We are not
`persuaded that a marginally accelerated trial schedule in these proceedings is
`a sufficient benefit to any party or the Board in light of the necessity to
`provide a just, speedy and inexpensive resolution of the Samsung IPR’s as
`contemplated by 37 C.F.R. § 42.1(b). Moreover, denying authorization for a
`motion for expedited action to consider Petitioner’s motions for joinder does
`
`
`
`IPR2016-00765 (Patent 5,915,210)
`IPR2016-00766 (Patent 5,659,891)
`no harm to Petitioner as they are not barred in these current proceedings
`under 35 U.S.C. § 315(b).
`For the reasons discussed above, we are not persuaded that the facts
`and circumstances in these proceedings and the Samsung IPR’s weigh in
`favor of expedited consideration of Petitioner’s motions for joinder.
`
`It is
`ORDERED that Petitioner’s request for expedited consideration of the
`Motions for Joinder Under 35 U.S.C. 315(c) AND 37 C.F.R. §§ 42.22 and
`42.122(b) filed with the Petitions in IPR2016-00765 and IPR2016-00766 is
`DENIED.
`
`
`
`For PETITIONER:
`
`Charles Griggers
`Dan Gresham
`Thomas | Horstemeyer, LLP
`
`charles.griggers@thomashorstemeyer.com
`dan.gresham@thomashorstemeyer.com
`
`For PATENT OWNER:
`
`John R. Kasha
`Kelly L. Kasha
`Kasha Law LLC
`
`john.kasha@kashalaw.com
`kelly.kasha@kashalaw.com
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