`
`
`
`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.,
`
`Petitioners,
`
`
`v.
`
`
`RYUJIN FUJINOMKAI
`
`Patent Owner.
`
`________________
`
`Case IPR2017-01017
`Patent Number: 6,151,493
`________________
`
`
`
`
`
`PATENT OWNER RYUJIN FUJINOMAKI’S COMBINED
`PRELIMINARY RESPONSE AND RESPONSE TO
`PETITIONERS’ MOTION FOR JOINDER
`
`

`

`Case IPR2017-01017
`Patent 6,151,493
`
`
`
`Paper No. 8
`
`TABLE OF CONTENTS
`
`INTRODUCTION ....................................................................................... 1
`
`SUMMARY OF ARGUMENT ................................................................... 2
`
`III. BACKGROUND ......................................................................................... 5
`
`A.
`
`B.
`
`IV. ARGUMENTS AND AUTHORITIES ........................................................ 5
`
`A.
`
`Status of Related Litigation ................................................................ 5
`
`Status of Related IPRs ....................................................................... 5
`
`The Petition should be denied because it was not timely filed, thus
`institution is barred by 35 U.S.C. §315(b). ......................................... 5
`
`1.
`
`2.
`
`Samsung and Huawei filed this IPR Petition more than one year
`after they were served with a complaint for infringement of the
`’493 patent. .............................................................................. 6
`
`Petitioners’ Motion for Joinder does not exempt their Petition
`from the time-bar of §315(b). ................................................... 8
`
`Patent Owner’s Response and Opposition to Petitioners’ Motion for
`Joinder. .............................................................................................12
`
`1.
`
`2.
`
`The Motion for Joinder should be denied because the motion was
`never authorized by the Board. ...............................................12
`
`Samsung and Huawei do not meet the statutory requirement for
`joinder to the -1522 IPR. .........................................................13
`
`I.
`
`II.
`
`
`
`
`
`
`B.
`
`
`
`
`
`
`C.
`
`If the Board exercises its discretion to grant the Motion, then this Case
`should be terminated and other procedural protections should be
`imposed. ...........................................................................................13
`
`
`CONCLUSION ..........................................................................................15
`
`V.
`
`
`
`ii
`
`

`

`Case IPR2017-01017
`Patent 6,151,493
`
`
`
`
`Paper No. 8
`
`TABLE OF AUTHORITIES
`
`
`Cases:
`
`City of Arlington v. FCC,
`133 S.Ct. 1863 (2013) ................................................................................. 10-11
`
`
`Hyundai Motor Co. v. American Vehicular Sciences LLC,
`Case IPR2014-01543, Paper 11 (PTAB Oct. 24, 2014) .................................... 15
`
`
`Sony Corp. of America v. Network-1 Security Solutions, Inc.,
`Case IPR2013-00495, Paper 13 (PTAB Sept. 16, 2013) ................................... 15
`
`
`Statutes:
`
`35 U.S.C. §311(a) ...............................................................................................3, 9
`
`35 U.S.C. §313 ...................................................................................................... 1
`
`35 U.S.C. §315(b) ..........................................................................................passim
`
`35 U.S.C. §315(c) ......................................................................................... 3, 9, 13
`
`35 U.S.C. §315(d) ................................................................................................ 13
`
`35 U.S.C. §316(a)(8) .............................................................................................. 1
`
`Regulations:
`
`37 C.F.R. §42.1(b) ............................................................................................... 13
`
`37 C.F.R. §42.20(a) ............................................................................................. 12
`
`37 C.F.R. §42.20(b) .................................................................................... 3, 12-13
`
`37 C.F.R. §42.101(b) ........................................................................................1, 10
`
`37 C.F.R. §42.107(a) ............................................................................................. 1
`
`
`
`
`iii
`
`

`

`Paper No. 8
`
`Case IPR2017-01017
`Patent 6,151,493
`37 C.F.R. §42.120 .................................................................................................. 1
`
`37 C.F.R. §42.122(b) ...................................................................................... 10-11
`
`Other Authorities:
`
`Standard Operating Procedure 1 (rev. 14, May 8, 2015) ...................................... 11
`
`PTAB Trial Practice Guide, 77 Fed. Reg. 157 .................................................... 12
`
`
`
`
`
`
`
`
`
`
`
`iv
`
`

`

`Case IPR2017-01017
`Patent 6,151,493
`
`
`
`
`Paper No. 8
`
`PATENT OWNER’S EXHIBIT LIST
`Title
`Fujinomaki’s Original Complaint for Patent Infringement;
`Case No. 2:15-cv-01381-JRG-RSP (E.D. Tex); Filed July 31, 2015
`Samsung’s Motion for Extension of Time; Filed August 18, 2015
`Huawei’s Motion for Extension of Time; Filed October 16, 2015
`Fujinomaki’s Motion to Substitute Defendant; Filed May 5, 2016
`Memorandum Order Granting Defendants’ Motion to Transfer Venue;
`Filed May 13, 2016
`
`Exhibit No.
`2001
`
`2002
`2003
`2004
`2005
`
`
`
`
`
`
`
`v
`
`

`

`Case IPR2017-01017
`Patent 6,151,493
`
`
`
`Paper No. 8
`
`I.
`
`INTRODUCTION
`Patent Owner Ryujin Fujinomaki (“Fujinomaki” or “Patent Owner”) files this
`combined Preliminary Response pursuant to 35 U.S.C. §313 and 37 C.F.R.
`§42.107(a) and Patent Owner’s Response and Opposition to Petitioners’ Motion for
`Joinder.
`This Preliminary Response raises preliminary or threshold issues only, and
`does not attempt to make a full response to all arguments or issues raised in the
`Petition by Petitioners Samsung Electronics Co., Ltd., Samsung Electronics
`America, Inc. (collectively “Samsung”), and Huawei Device USA Inc. (“Huawei”).1
`If a trial is instituted in this case, Patent Owner reserves its right to present additional
`evidence and to raise additional factual and legal arguments in addition to the
`arguments presented in this Preliminary Response. Patent Owner’s decision at this
`time to forgo contesting or rebutting any contention or argument made in the Petition
`is not an indication of Patent Owner’s agreement with the contention or argument,
`nor should it be deemed an admission by Patent Owner as to the truth or accuracy of
`such contention or argument. Patent Owner reserves all rights to provide a full
`response to the Petition in a Patent Owner Response, in accordance with the
`applicable federal statutes and rules of the Patent Trial and Appeal Board. See
`35 U.S.C. §316(a)(8) and 37 C.F.R. §42.120.
`
`
`1 All three Petitioners are collectively referred to herein as “Petitioners.”
`1
`
`
`
`

`

`
`
`Paper No. 8
`
`Case IPR2017-01017
`Patent 6,151,493
`SUMMARY OF ARGUMENT
`II.
`Petitioners allege that Patent Owner asserted claims 1, 2, 3, and 8 against
`Petitioners in Fujinomaki v. Google Inc., Case No. 3:16-cv-03137-JSC (N.D. Cal),
`transferred from Fujinomaki v. Google Inc., 2:15-cv-1381-RJG-RSP (E.D. Tex.).
`See Petition, Paper No. 3, at 4. Patent Owner agrees that he asserted claims 1, 2, 3,
`and 8 against Samsung. Patent Owner filed suit in the Eastern District of Texas on
`July 31, 2015. See Ex. 2001, Complaint in 2:15-cv-1381 at 1, 33. Samsung
`Electronics America was served with a summons on August 5, 2015. See Ex. 2002
`at 2. On August 18, 2015, Samsung Electronics Co., Ltd., through counsel, appeared
`in the Eastern District of Texas by way of its counsel’s motion for an extension of
`time to answer, offering to waive any formal service requirement in exchange for an
`extension of time. Id.
`Patent Owner’s lawsuit of July 31, 2015 in the Eastern District of Texas
`additionally named Huawei Technologies Co., Ltd. as a Defendant. See Ex. 2001 at
`1, 2, 13. On October 16, 2015, through an unopposed motion by its counsel, Huawei
`Technologies Co., Ltd., agreed to waive service in exchange for an extension of time
`to answer the complaint. See Ex. 2003 at 1. In light of Huawei Device USA, Inc.’s
`representation in the motion for joinder that Patent Owner asserted claims against
`Huawei Device USA, Inc., in addition to the litigation history in the Eastern District
`of Texas, Patent Owner asserts that Huawei was effectively served on October 16,
`2015 by way of counsel for Huawei Technologies Co., Ltd.’s waiver of service.
`Because both Samsung and Huawei were served more than one year prior to
`the filing of the Petition in this action (Paper 3 of IPR2017-01017), the Petition must
`
`
`
`2
`
`

`

`Case IPR2017-01017
`Patent 6,151,493
`
`
`
`Paper No. 8
`
`be denied, and the Board may not institute a trial in this case. See 35 U.S.C. §315(b)
`(“An 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 … is
`served with a complaint alleging infringement of the patent.”).
`Petitioners’ Motion for Joinder, Paper 4, should also be denied. Petitioners’
`motion has not been authorized by the Board, as required by 37 C.F.R. §42.20(b).
`Petitioners do not meet the statutory requirements for joinder, and have no standing
`to request joinder, because Petitioners did not file a proper IPR petition. See
`35 U.S.C. §315(c) (authoring joinder only for “any person who properly files a
`petitioner under section 311 …”) and 35 U.S.C. §311(a) (stating that all petitions are
`“[s]ubject to the provisions of this chapter,” thus including the timeliness
`requirement of §315(b)). Petitioners’ motion for joinder does not meet Petitioners’
`burden to show that joinder is warranted under the particular facts of this case, as
`discussed below.
`Patent Owner concedes that Petitioners’ IPR petition is duplicative of the
`grounds, evidence, and arguments presented by petitioners Google Inc. (“Google”),
`LG Electronics U.S.A., Inc., and LG Electronics Mobilecomm U.S.A., Inc. (“LG”)
`in IPR2016-01522 (the “-1522 IPR”), which has been instituted for trial. Patent
`Owner 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. Patent Owner respectfully contends
`that such an outcome is contrary to the statutory mandate of §315(b), and that in
`doing so the Board exceeds a limitation that Congress placed on the Board’s
`3
`
`
`
`

`

`Case IPR2017-01017
`Patent 6,151,493
`
`
`
`Paper No. 8
`
`statutory authority and that is plainly expressed in the statute. Despite the prior panel
`decisions to the contrary, Patent Owner urges this panel to follow the plain
`commands of the statute; and Patent Owner presents its arguments here to preserve
`the issue for appeal, if necessary.
`If the Board decides to grant Petitioners’ Motion for Joinder, the Board should
`impose restrictions and conditions on Petitioners’ participation in the -1522 IPR that
`will ensure Patent Owner is not prejudiced by the joinder, minimize disruptions in
`the schedule for the -1522 IPR, and otherwise provide efficiency for the parties and
`the Board.
`
`
`
`
`
`
`4
`
`

`

`Case IPR2017-01017
`Patent 6,151,493
`III. BACKGROUND
`
`
`
`Paper No. 8
`
`Status of Related Litigation
`A.
`The ’493 patent is currently subject to the following district court litigations:
`• Fujinomaki v. Google Inc., et al., 3:16-cv-03137-JSC (N.D. Cal.).
`Patent Owner filed its complaint alleging infringement of the ’493 patent
`against both Samsung and Huawei, among other parties, on July 31, 2015.
`Fujinomaki v. Google Inc., et al., 2:15-cv-01381, Doc. 1 (E.D. Tex. July 31, 2015).
`See Ex. 2001. Samsung entered an appearance and waived formal service of the
`complaint on August 18, 2015. See Ex. 2002. Huawei, through what is presumed by
`Patent Owner to be Huawei’s foreign parent, entered an appearance and waived
`formal service on October 16, 2015.
`
`Status of Related IPRs
`B.
`The ’493 patent is currently subject of one other pending IPR proceeding,
`the -1522 IPR, to which Petitioners seek joinder.
`
`IV. ARGUMENTS AND AUTHORITIES
`
`A. The Petition should be denied because it was not timely filed, thus
`institution is barred by 35 U.S.C. §315(b).
`Samsung and Huawei’s IPR Petition was not timely filed, and it may not be
`instituted for trial. Congress set forth the one-year statutory time-bar for IPR
`petitions as follows in §315(b):
`An 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 petition, real party in interest, or
`
`
`
`5
`
`

`

`Case IPR2017-01017
`Patent 6,151,493
`
`
`
`Paper No. 8
`
`privy of the petitioner is served with a complaint alleging
`infringement of the patent. The time limitation set forth in
`the preceding sentence shall not apply to a request for
`joinder under subsection (c).
`
`Samsung and Huawei filed this IPR Petition more than one year
`1.
`after they were served with a complaint for infringement of the ’493
`patent.
`On July 31, 2015, Patent Owner filed its complaint alleging infringement of
`the ’493 patent against Samsung and Huawei Technologies Co., Ltd., among other
`parties. See Ex. 2001. The complaint was formally served on certain parties while
`other parties waived formal service. See, e.g., Exs. 2002 and 2003.
`For example, Samsung Electronics America was served with a summons on
`August 5, 2015. See Ex. 2002 at 2. On August 18, 2015, Samsung Electronics Co.,
`Ltd., through counsel, appeared in the Eastern District of Texas by way of its
`counsel’s motion for an extension of time to answer, offering to waive any formal
`service requirement in exchange for an extension of time. Id.
`Patent Owner’s lawsuit of July 31, 2015 in the Eastern District of Texas
`additionally named Huawei Technologies Co., Ltd. as a Defendant. See Ex. 2001 at
`1, 2, 13. On October 16, 2015, through an unopposed motion by its counsel, Huawei
`Technologies Co., Ltd., agreed to waive service in exchange for an extension of time
`to answer the complaint. See Ex. 2003 at 1. In light of Huawei Device USA, Inc.’s
`representation in its petition that Patent Owner asserted claims against Huawei
`Device USA, Inc., (Paper No. 3, at 4) in addition to the litigation history in the
`
`
`
`6
`
`

`

`Case IPR2017-01017
`Patent 6,151,493
`
`
`
`Paper No. 8
`
`Eastern District of Texas, Patent Owner asserts that Huawei was effectively served
`on October 16, 2015 by way of counsel for Huawei Technologies Co., Ltd. waiving
`service. 2
`
`
`2 On May 5, 2016, Patent Owner, through its counsel in the Eastern District,
`filed an opposed motion to substitute Huawei Device USA, Inc. as a Defendant in
`place of Defendant Huawei Technologies Co., Ltd. See Ex. 2004 (“Motion to
`Substitute”) at 1. Although other parties to the lawsuit in the Eastern District had
`opposed the relief sought by Patent Owner’s motion, Huawei Technologies Co., Ltd.
`did not oppose the relief. See Ex. 2004 at 2, 3. In light of Huawei Technologies Co.
`Ltd.’s non-opposition to the Motion to Substitute, Patent Owner agrees that it has
`asserted claims 1, 2, 3, and 8 against Huawei Device USA, Inc. Eight days after
`Plaintiff’s Motion to Substitute, the court in the Eastern District of Texas transferred
`the lawsuit to the Northern District of California. See Ex. 2005. Huawei Device
`USA, Inc. was never substituted as a party for Huawei Technologies Co., Ltd. The
`case in the Northern District of California is presently stayed pending the outcome
`of IPR2016-01522. However, Huawei Device USA, Inc. has not alleged that
`Huawei Technologies Co., Ltd. is a real party in interest. To the extent that Huawei
`Device USA, Inc. is willing to stipulate that any preclusive effect resulting from this
`IPR that applies to Huawei Device USA, Inc. will also apply to Huawei
`Technologies Co., Ltd., Patent Owner does not challenge the Huawei Device USA,
`Inc. is the real party in interest with respect to this petition. If Huawei Device USA,
`
`
`
`7
`
`

`

`
`
`Paper No. 8
`
`Case IPR2017-01017
`Patent 6,151,493
`
`
`
`Petitioners filed this Petition on March 6, 2017—more than one year after
`both Samsung and Huawei were served with Patent Owner’s complaints for
`infringement of the ’493 patent. See Petition, Paper 1.
`
`Petitioners’ Motion for Joinder does not exempt their Petition
`2.
`from the time-bar of §315(b).
`Petitioners’ Motion for Joinder does not make the §315(b) time-bar
`inapplicable. This is apparent from the plain language of the statute. The second
`sentence of §315(b) does not state that the filing of a request for joinder makes the
`time-bar itself (from the first sentence) inapplicable to a particular petition. Instead,
`by its plain language, the statute merely states that the one-year limitations period
`“shall not apply to a request for joinder . . . .” 35 U.S.C. §315(b) (emphasis added).
`In other words, a petitioner who has timely filed an IPR petition may request joinder
`to another proceeding after the one-year deadline for filing a petition, and such a
`request for joinder would not be precluded by the §315(b) one-year deadline. The
`
`
`Inc. alleges that Huawei Technologies Co., Ltd. is not subject to any preclusive effect
`from this IPR, Patent Owner intends to seek discovery regarding real parties in
`interest and will seek dismissal of this petition for failure to list the real parties in
`interest. On March 31, 2017, counsel for Patent Owner e-mailed counsel for
`Petitioners to discuss this matter but as of this filing has not received a response.
`
`8
`
`
`
`
`
`

`

`Case IPR2017-01017
`Patent 6,151,493
`
`
`
`Paper No. 8
`
`plain language of the statute, however, simply does not state that a request for joinder
`suspends the time-bar for the filing of a petition.
`Patent Owner’s reading of §315(b) is reinforced by the language of §315(c),
`in at least two ways. First, §315(c) grants the Director the authority and discretion
`to join parties to an instituted IPR case, but only for “any person who properly files
`a petition under section 311.” See 35 U.S.C. 315(c) (emphasis added). Section 311(a)
`states that IPR petitions are “[s]ubject to the provisions of this chapter . . .”, and thus
`incorporates by reference all of the statutory requirements for a proper IPR petition,
`including the timeliness requirement of §315(b). In other words, a party who did
`not timely file its own IPR petition did not “properly file” its petition, and therefore
`is not eligible for joinder at all under §315(c).
`Second, §315(c) states that the Director may join a party to an instituted case
`only after the Director has first determined that the petition filed by the party seeking
`joinder should itself be instituted for a full IPR trial. See 35 U.S.C. §315(c)
`(precluding the Director from deciding the joinder issue until after a preliminary
`response has been filed to the petition filed by the party seeking joinder, and
`permitting joinder only if the Director first “determines [that the petition] warrants
`the institution of an inter partes review under section 314”). Prior to joinder, the
`Director would have no authority or discretion to institute a petition that was filed
`more than one year after the petitioner had been served with a complaint alleging
`infringement of the patent. See 35 U.S.C. §315(b). The second sentence of §315(b)
`makes the time-bar inapplicable to the request for joinder; but the statutory language
`does nothing to alter or affect the institution decision which, according to §315(c),
`9
`
`
`
`

`

`Case IPR2017-01017
`Patent 6,151,493
`
`
`
`Paper No. 8
`
`must be made as a prerequisite before joinder can even be considered. In making the
`institution decision, §315(b) very plainly states that a time-barred petition “may not
`be instituted . . . .” 35 U.S.C. §315(b).
`Patent Owner is aware that the Board’s regulations governing IPR practice
`may be read as contrary to Patent Owner’s interpretation of the §315(b) time-bar.
`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”).3 Patent Owner
`respectfully contends that the §42.122(b) is not a valid regulation because it is
`contrary to the statutory mandate of §315(b), for the reasons previously discussed.
`Accordingly, Patent Owner respectfully contends that §42.122(b) is not a valid
`exercise of the USPTO’s statutory rulemaking authority. See City of Arlington v.
`FCC, 133 S.Ct. 1863, 1869 (2013) (“[F]or agencies charged with administering
`congressional statutes . . . [b]oth their power to act and how they are to act is
`authoritatively prescribed by Congress, so that when they act improperly, no less
`than when they act beyond their jurisdiction, what they do is ultra vires”). Patent
`Owner is unaware of any judicial decision that has endorsed or affirmed the time-
`bar waiver in §42.122(b) as a valid exercise of the USPTO’s administrative
`rulemaking authority, or that has found the final sentence of §42.122(b) to be
`consistent with the language of §315(b). Nor is Patent Owner aware of any judicial
`
`
`3 Section 42.101(b) sets forth a one-year time-bar that is substantively
`
`identical to §315(b). See 37 C.F.R. §42.101(b).
`
`
`
`10
`
`

`

`Case IPR2017-01017
`Patent 6,151,493
`
`
`
`Paper No. 8
`
`decision that has expressly affirmed the Board’s waiver of the §315(b) time bar when
`an otherwise time-barred petitioner files a motion for joinder with the petition.
`The USPTO and the Board are required to comply with all applicable statutory
`mandates, and no discretion is afforded to the USPTO’s interpretation of statutes
`that are plain and unambiguous. See City of Arlington, 133 S.Ct. at 1870-71 (2013)
`(“[T]he question in every case is, simply, whether the statutory text forecloses the
`agency’s assertion of authority, or not”).
`Patent Owner respectfully urges the Board to apply the plain language of
`§315(b) in this case, as it is required to do. The plain language of the statute does
`not does not suspend the statutory time-bar when a request for joinder is filed along
`with a petition. If the panel feels obligated to ignore §315(b) because of a contrary
`regulation (§42.122(b), final sentence) or because of prior panel decisions, Patent
`Owner urges the panel to seek to have this issue decided by an enlarged panel of
`judges4 (ideally including the Chief Judge, Deputy Chief Judge, and/or Vice Chief
`Judges), or by any other process that will permit the panel to comply with the plain
`statutory mandate of §315(b).
`
`
`4 For clarity, Patent Owner is not itself requesting an enlarged panel at this
`
`time, but is merely suggesting that the current panel seek an enlarged panel pursuant
`
`to Standard Operating Procedure 1 at III(C) (rev. 14, May 8, 2015) if the panel agrees
`
`with Patent Owner’s reading of §315(b) but feels bound to reach a contrary result
`
`because of inconsistent PTAB regulations or by contrary decisions by prior panels.
`
`
`
`11
`
`

`

`Case IPR2017-01017
`Patent 6,151,493
`Patent Owner’s Response and Opposition to Petitioners’ Motion
`B.
`for Joinder.
`
`Paper No. 8
`
`
`
`The Motion for Joinder should be denied because the motion was
`1.
`never authorized by the Board.
`Petitioners’ Motion for Joinder should be denied because Petitioners have
`never requested authorization to file the motion.
`Under the applicable PTAB regulations, all requests for relief (other than a
`request for institution of trial) must be made by motion, and all motions must be
`authorized by the Board. See 37 C.F.R. §42.20(a) and (b). The rule states that the
`authorization “may be provided in an order of general applicability or during the
`proceeding.” See id. at §42.20(b).
`The PTAB’s Trial Practice Guide states that certain motions for which it may
`be impractical to obtain prior Board authorization may be filed without the Board’s
`prior authorization. See Trial Practice Guide, 77 Fed. Reg. 157 at 48762 (“Generally,
`a motion will not be entered without prior Board authorization. … Exceptions
`include motions where it is impractical for a party to seek prior Board
`authorization…”) But the Trial Practice Guide does not suspend the authorization
`requirement of §42.20(b) altogether. Instead, the Trial Practice Guide recognizes a
`limited exception to obtaining prior Board authorization in cases where it is
`impractical to do so.
`The Trial Practice Guide does not mention a motion for joinder as an example
`of motions that do not require prior authorization; but even assuming that a motion
`for joinder filed with the petition falls within this exception, Petitioners were still
`required to seek the Board’s authorization after the motion was filed. See
`
`
`
`12
`
`

`

`Case IPR2017-01017
`Patent 6,151,493
`
`
`
`Paper No. 8
`
`37 C.F.R. §42.20(b) (“A motion will not be entered without Board authorization.”)
`Petitioners have never done so. Petitioners could have requested such authorization
`at any time since they filed the petition, but they did not. Petitioners’ Motion for
`Joinder should therefore be denied because it lacks the required authorization.
`
`Samsung and Huawei do not meet the statutory requirement for
`2.
`joinder to the -1522 IPR.
`Following institution of an IPR trial, §315(c) permits joinder only for “any
`person who properly files a petition under section 311….” 35 U.S.C. §315(b).
`Petitioners do not meet this statutory requirement because they did not timely file
`the present petition. Because Petitioners did not “properly file a petition,” they
`cannot be joined to the -1522 IPR case.
`
`If the Board exercises its discretion to grant the Motion, then this
`C.
`Case should be terminated and other procedural protections should be
`imposed.
`Even if the Board, in its discretion, grants Samsung and Huawei’s Motion for
`Joinder and adds Samsung and Huawei as parties to the -1522 IPR, this case must
`be terminated. The Board may not institute this case for a trial because the petition
`was not timely filed. See 35 U.S.C. §315(b). Moreover, the Director has discretion
`to terminate this case after Samsung and Huawei are joined to the -1522 IPR. See 35
`U.S.C. §315(d). Institution for trial in this IPR and also in the -1522 IPR would be
`inefficient for the parties and wasteful of the Board’s resources, and thus would not
`“secure the just, speedy, and inexpensive resolution” of the proceeding as required
`by 37 C.F.R. §42.1(b).
`
`
`
`13
`
`

`

`Case IPR2017-01017
`Patent 6,151,493
`
`
`
`Paper No. 8
`
`If Samsung and Huawei are added as parties to the -1522 IPR, Patent Owner
`requests that the Board impose procedural safeguards to ensure Patent Owner is not
`prejudiced by the joinder, to minimize disruptions in the schedule for the -1522 IPR,
`and otherwise to promote efficiency for the parties and the Board. While Petitioners
`have listed several ways in which they will act as an “understudy,” (see Paper No. 4
`at 6) Patent Owner requests at least the following:
`• 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.
`
`
`
`14
`
`

`

`Case IPR2017-01017
`Patent 6,151,493
`
`
`
`Paper No. 8
`
`• 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.
`See, e.g. Hyundai Motor Co. v. American Vehicular Sciences LLC, Case IPR2014-
`01543, Paper 11 at 4-6; Sony Corp. of America v. Network-1 Security Solutions, Inc.,
`Case IPR2013-00495, Paper 13 at 10-11.
`
`V. CONCLUSION
`For the foregoing reasons, the Board should deny Samsung and Huawei’s IPR
`petition and also deny the Motion for Joinder.
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: April 5, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
`
`Registration No. 48,476
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-3490
`Email: brent@nelbum.com
`
`
`
`15
`
`

`

`Case IPR2017-01017
`Patent 6,151,493
`
`
`
`Paper No. 8
`
`CERTIFICATE OF COMPLIANCE WITH WORD COUNT
`Pursuant to 37 C.F.R. §42.24(d), I certify that this Combined Preliminary
`Response and Response to Petitioners’ Motion for Joinder complies with the type-
`volume limits of 37 C.F.R. §42.24(b)(1) because it contains 3,616 words,
`excluding the parts of this Combined Preliminary Response and Response to
`Petitioners’ Motion for Joinder that are exempted by 37 C.F.R. §42.24(a)(1),
`according to the word processing system used to prepare this Combined
`Preliminary Response and Response to Petitioners’ Motion for Joinder.
`
`By:
`
`
`
`
`
`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
`
`Registration No. 48,476
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-3490
`Email: brent@nelbum.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`16
`
`
`
`
`
`
`
`

`

`Case IPR2017-01017
`Patent 6,151,493
`
`
`
`Paper No. 8
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 5th day of April 2017, a copy of Patent Owner
`
`Ryujin Fujinomaki’s Combined Preliminary Response and Response to Petitioners’
`
`Motion for Joinder has been served in its entirety via email on the following:
`
`W. Karl Renner (Lead counsel)
`Thomas A. Rozylowicz (Backup counsel)
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Telephone: 202-783-5070
`Facsimile: 877-769-7945
`Email: IPR25620-0004IP1@fr.com (referencing No. 25620-0004IP1)
`PTABInbound@fr.com; axf-
`ptab@fr.com; renner@fr.com; rozylowicz@fr.com
`
`
`
`
`
`Dated: April 5, 2017
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
`
`Registration No. 48,476
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-3490
`Email: brent@nelbum.com
`
`
`
`17
`
`
`
`
`
`
`
`cc:
`
`