Trials@uspto.gov
`571-272-7822
`
`Paper 19
`Entered: May 26, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`HUAWEI DEVICE USA, INC.,
`Petitioner,
`
`v.
`
`RYUJIN FUJINOMAKI,
`Patent Owner.
`____________
`
`Case IPR2017-01017
`Patent 6,151,493
`____________
`
`
`
`Before DAVID C. MCKONE, BARBARA A. PARVIS, and
`DANIEL N. FISHMAN, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`Institution of Inter Partes Review and
`Order Granting Petitioner’s Motion
`for Joinder of IPR2017-01017 with IPR2016-01522
`37 C.F.R. 42.108
`37C.F.R. § 42.122(b)
`
`
`
`
`571-272-7822
`
`Paper 19
`Entered: May 26, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`HUAWEI DEVICE USA, INC.,
`Petitioner,
`
`v.
`
`RYUJIN FUJINOMAKI,
`Patent Owner.
`____________
`
`Case IPR2017-01017
`Patent 6,151,493
`____________
`
`
`
`Before DAVID C. MCKONE, BARBARA A. PARVIS, and
`DANIEL N. FISHMAN, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`Institution of Inter Partes Review and
`Order Granting Petitioner’s Motion
`for Joinder of IPR2017-01017 with IPR2016-01522
`37 C.F.R. 42.108
`37C.F.R. § 42.122(b)
`
`
`
`
`
`IPR2017-01017
`Patent 6,151,493
`
`I. INTRODUCTION
`On March 6, 2017, Samsung Electronics Co., Ltd., Samsung
`Electronics America, Inc., and Huawei Device USA, Inc. (collectively,
`“Petitioner”) filed a Petition (Paper 3, “Pet.”) for inter partes review of
`claims 1–6 and 8–10 of U.S. Patent No. 6,151,493 (Ex. 1001, “the ’493
`patent”). With its Petition, Petitioner filed a Motion for Joinder (Paper 4,
`“Mot.”) with Google Inc. v. Fujinomaki, Case No. IPR2016-01522 (“the
`Google IPR”). Patent Owner filed a Combined Preliminary Response and
`Response to Petitioner’s Motion for Joinder (Paper 8, “Opp.”). We
`conducted a teleconference on May 18, 2017, among the panel and counsel
`for the petitioners in this proceeding, the petitioners in the Google IPR, and
`Patent Owner, to discuss cooperation among the petitioners to minimize the
`impact of joinder on the Google IPR should we grant joinder. On the
`teleconference, the petitioners in the Google IPR indicated that they do not
`oppose joinder, as long as steps are taken to minimize any impact on the
`Google IPR. For the reasons given below, we institute an inter partes
`review of claims 1–6 and 8–10 of the ’493 patent and grant Petitioner’s
`Motion for Joinder.
`
`
`II. ANALYSIS
`A. Applicability of the 35 U.S.C. § 315(b) Statutory Bar
`Patent Owner contends that the Petition was filed after the one-year
`statutory time period set forth in 35 U.S.C. § 315(b). Opp. 6–8. According
`to the statute, “[a]n inter partes review may not be instituted if the petition
`requesting the proceeding is filed more than 1 year after the date on which
`the petitioner, real party in interest, or privy of the petitioner is served with a
`
`
`
`2
`
`
`
`IPR2017-01017
`Patent 6,151,493
`complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). Section
`315(b) further states “[t]he time limitation set forth in the preceding sentence
`shall not apply to a request for joinder under subsection (c).” According to
`our rules, the time bar of Section 315(b) does not apply if the petition is
`accompanied by a request for joinder and joinder is granted. See 37 C.F.R.
`§ 42.122(b) (“The time period set forth in § 42.101(b) shall not apply when
`the petition is accompanied by a request for joinder.”).
`Patent Owner contends that the time bar of Section 315(b) applies
`regardless of joinder. Opp. 8. Specifically, Patent Owner argues that, by its
`plain language, the statute only permits a request for joinder to be filed after
`the one-year deadline and does not suspend the time period for filing a
`petition. Id. at 8–10. According to Patent Owner, 35 U.S.C. § 315(c) gives
`the Director discretion to join parties to an instituted proceeding only for a
`person who properly files a petition, which Patent Owner argues carries with
`it a requirement that the time bar is met. Id. at 9. As to our rules, Patent
`Owner contends that Rule 42.122(b) is not valid because it is contrary to
`Section 315(b). Id. at 10. For the reasons stated in the Board’s prior
`decisions, we are persuaded that our rules are consistent with the statute and,
`therefore, we reject Patent Owner’s argument. See, e.g., Microsoft Corp. v.
`Proxyconn Inc., IPR2013–00109, slip op. at 4 (PTAB Feb. 25, 2013)
`(Paper 15).
`
`B. The Motion for Joinder Was Authorized
`Patent Owner contends that the Motion for Joinder was unauthorized
`and, thus, must be denied. Opp. 12–13. According to our rules, “[a] motion
`will not be entered without Board authorization. Authorization may be
`provided in an order of general applicability or during the proceeding.”
`
`
`
`3
`
`
`
`IPR2017-01017
`Patent 6,151,493
`37 C.F.R. § 42.20(a). Nevertheless, as our Trial Practice Guide counsels,
`“[e]xceptions include motions where it is impractical for a party to seek
`prior Board authorization, and motions for which authorization is
`automatically granted.” Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,762 (Aug. 14, 2012); see also Final Rule, Rules of Practice for
`Trials Before the Patent Trial and Appeal Board and Judicial Review of
`Patent Trial and Appeal Board Decisions, 77 Fed. Reg. 48,612, 48,632
`(Aug. 14, 2012) (“Authorization is required for the filing of each motion
`either through Board order or as specified by rule, e.g., a motion to seal
`(§ 42.54(a)) and a motion to expunge confidential information (§ 42.56).”).
`A motion for joinder is one such motion for which authorization is granted
`automatically. See 37 C.F.R. § 42.122(b) (“Joinder may be requested by a
`patent owner or petitioner. Any request for joinder must be filed, as a
`motion under § 42.22, no later than one month after the institution date of
`any inter partes review for which joinder is requested.”). Because
`permission to file a motion for joinder is granted automatically by Rule
`42.122(b), Petitioner was not required to seek authorization before filing its
`Motion for Joinder.
`
`C. Petitioner Has Shown that Joinder Is Appropriate
`Other panels of this Board have counseled that a motion for joinder
`should (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.
`See, e.g., Kyocera Corp. v. Softview LLC, Case IPR2013-00004, slip op. at 4
`(PTAB Apr. 24, 2013) (Paper 15). Nevertheless, we “routinely grant[]
`
`
`
`4
`
`
`
`IPR2017-01017
`Patent 6,151,493
`motions for joinder where the party seeking joinder introduces identical
`arguments and the same grounds raised in the existing proceeding.”
`Samsung Electronics Co., Ltd. v. Raytheon Co., Case IPR2016-00962, slip
`op. at 9 (PTAB Aug. 24, 2016) (Paper 12) (emphases in original).
`Petitioner represents that:
`The challenged claims and grounds of Petitioner’s petition are
`substantively identical to claims and grounds presented in the
`petition filed by Google and LG (IPR2016-01522). The same
`prior art, and even the same expert and expert declaration, are
`used in both proceedings. Petitioner proposes no new grounds
`of unpatentability.
`Mot. 4. Patent Owner “concedes that Petitioners’ IPR petition is duplicative
`of the grounds, evidence, and arguments presented by [the petitioners] in
`IPR2016-01522” and “is aware of previous Board decisions permitting
`institution of copy-cat petitions that would otherwise be time-barred when a
`request for joinder to an instituted trial is filed with the copy-cat petition.”
`Opp. 3. Thus, this proceeding falls into the category of cases for which we
`grant joinder routinely.
`Furthermore, Petitioner represents that, “if joined, Petitioner agrees to
`take an ‘understudy’ role as petitioners in other similarly joined proceedings
`have taken.” Mot. 4 (quoting Sony Corp. v. Memory Integrity, LLC, Case
`IPR2015-01353, slip op. at 6 (PTAB Oct. 5, 2015) (Paper 11)). To that end,
`Petitioner represents that
`all filings by Petitioner in the joined proceeding will be
`consolidated with the filings of Google and LG, unless a filing
`solely concerns issues that do not involve Google or LG;
`Petitioner will not introduce any argument or discovery not
`introduced by Google or LG; and Petitioner assents to Google
`and LG leading any depositions associated with the joined
`proceeding.
`
`
`
`5
`
`
`
`IPR2017-01017
`Patent 6,151,493
`Id. at 6. Petitioner “expressly consents to the existing trial schedule in
`IPR2016-01522.” Id. at 5.
`Patent Owner acknowledges Petitioner’s representation that it will act
`as an understudy, but requests that we impose the following “procedural
`safeguards” to eliminate prejudice to Patent Owner:
`• Samsung and Huawei should be required to formally adopt all
`previous
`filings,
`arguments,
`evidence,
`positions,
`representations, and statements made by Google and LG in
`the -1522 IPR.
`• Samsung and Huawei should be required to adopt the
`previous declaration of Dr. Quackenbush, and should not be
`permitted to introduce delay or scheduling constraints on
`Dr. Quackenbush’s deposition (i.e., Dr. Quackenbush’s
`deposition shall be set by counsel for Patent Owner, LG, and
`Google, irrespective of the availability of counsel for
`Samsung and Huawei).
`• Samsung and Huawei should be required to submit to the
`control of Google and LG with respect to all future filings in
`the -1522 IPR, and Google and LG should continue to control
`all decisions related to the management and strategy for the
`case for so long as Google and LG are parties to the
`proceeding.
`• Samsung and Huawei should not be permitted to make any
`independent filings on any issue without prior authorization
`from the Board.
`• Samsung and Huawei should not be permitted to make their
`own arguments, jointly or individually, at the oral argument
`if Google or LG is a party at the time without prior
`authorization from the Board.
`Opp. 14–15. On the May 18, 2017, teleconference, Petitioner agreed to be
`bound by these restrictions. We accept this agreement and consider
`Petitioner bound by these restrictions.
`
`
`
`6
`
`
`
`IPR2017-01017
`Patent 6,151,493
`Upon considering the arguments in the Motion for Joinder and
`Opposition, we are persuaded that joinder is appropriate. By presenting
`grounds and arguments substantially identical to those presented in the
`Google IPR, Petitioner has ensured that no new grounds will affect the
`Google IPR. Furthermore, Petitioner has agreed to the existing schedule,
`has accepted an “understudy” role, and has agreed to abide by restrictions
`proposed by Patent Owner. We are persuaded that the impact to the existing
`schedule and prejudice to the existing parties in the Google IPR will be
`minimal.
`
`
`III. CONCLUSION
`We institute an inter partes review of claims 1–6 and 8–10 of the ’493
`patent and grant Petitioner’s Motion for Joinder.
`
`
`
`
`7
`
`
`
`IPR2017-01017
`Patent 6,151,493
`
`IV. ORDER
`For the reasons given, it is:
`ORDERED that inter partes review is instituted in IPR2017-01017 as
`to claims 1–6 and 8–10 of U.S. Patent No. 6,151,493 on the same grounds as
`those in the Google IPR, and no other grounds are authorized;
`FURTHER ORDERED that IPR2017-01017 is joined to the
`Google IPR, the Scheduling Order in the Google IPR is unchanged and shall
`be applied to the joined proceeding;1
`FURTHER ORDERED that all further filings in the joined proceeding
`shall be made in the Google IPR, IPR2016-01522;
`FURTHER ORDERED that, having joined IPR2017-01017 and
`IPR2016-01522, under 37 C.F.R. § 42.72, IPR2017-01017 is terminated;
`and
`
`FURTHER ORDERED that the caption in IPR2016-01522 shall be
`changed to reflect joinder with IPR2017-01017 as shown on the attached
`page.
`
`
`1 We note that the parties in the Google IPR stipulated to modifications to
`certain dates in the Scheduling Order, as permitted by the Scheduling Order.
`Google IPR, Paper 14.
`
`
`
`8
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`Paper No. __
`Entered: __
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC., LG ELECTRONICS, INC.,
`LG ELECTRONICS, U.S.A., INC., LG ELECTRONICS MOBILECOMM
`U.S.A., INC., SAMSUNG ELECTRONICS CO., LTD, SAMSUNG
`ELECTRONICS AMERICA, INC., and HUAWEI DEVICE USA, INC.
`Petitioner,
`
`v.
`
`RYUJIN FUJINOMAKI,
`Patent Owner.
`____________
`
`Case IPR2016-015221
`Patent 6,151,493
`____________
`
`
`
`
`
`
`
`1 Case IPR2017-01017 has been joined with this proceeding.
`
`
`
`IPR2017-01017
`Patent 6,151,493
`
`PETITIONER:
` for IPR2017-01017
`
`W. Karl Renner
`Thomas A. Rozylowicz
`FISH & RICHARDSON, P.C.
`axf-ptab@fr.com
`tar@fr.com
`
` for IPR2016-01522
`
`J. Steven Baughman
`Gabrielle E. Higgins
`Kathryn N. Hong
`ROPES & GRAY LLP
`Steven.baughman@ropesgray.com
`Gabrielle.higgins@ropesgray.com
`Kathryn.hong@ropesgray.com
`
`
`
`
`
`PATENT OWNER:
`Brent N. Bumgardner
`Thomas Cecil
`John Murphy
`NELSON BUMGARDNER, P.C
`bbumgardner@nbclaw.net
`tom@nelbum.com
`muphy@nelbum.com
`
`10
`
`
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