`571-272-7822 Entered: September 15, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS COMPANY, LTD.,
`Petitioner,
`
`v.
`
`DANIEL L. FLAMM,
`Patent Owner.
`____________
`
`Case IPR2017-01748
`Patent 5,711,849
`____________
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, JO-ANNE M. KOKOSKI, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`IPR2017-01748
`Patent 5,711,849
`
`
`I. INTRODUCTION
`Samsung Electronics Company, Ltd. (“Samsung”) filed a Petition
`(Paper 1, “Pet.”) to institute an inter partes review of claims 1–29 of U.S.
`Patent No. 5,711,849 (Ex. 1001, “the ’849 patent”). Concurrently with its
`Petition, Samsung filed a Motion for Joinder (Paper 3, “Motion” or “Mot.”),
`seeking to join, as a Petitioner, with Micron Technology, Inc. v. Daniel L.
`Flamm, Case IPR2017-00406 (“the Micron IPR”). Patent Owner Daniel L.
`Flamm (“Flamm”) did not file an opposition to Samsung’s Motion. Micron
`Technology, Inc., Intel Corporation, and GLOBALFOUNDRIES U.S. Inc.
`(collectively, “the Micron Petitioners”), the petitioners in the Micron IPR,
`filed a Partial Opposition to Samsung’s Motion (Paper 7, “Opposition” or
`“Opp.”), and Samsung filed a Reply (Paper 8, “Reply”). On September 12,
`2017, Flamm filed a Notice electing to waive a preliminary response to the
`Petition. Paper 9.
`For the reasons set forth below, we grant Samsung’s Motion for
`Joinder.
`
`
`II. DISCRETION TO GRANT JOINDER
`The controlling statute regarding joinder of inter partes reviews is
`35 U.S.C. § 315(c), which reads as follows:
`(c) JOINDER.—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.
`
`
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`IPR2017-01748
`Patent 5,711,849
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`By regulation, the Director’s discretion has been delegated to the Board.
`37 C.F.R. § 42.4(a). We, therefore, have discretion to join Samsung to the
`instituted Micron IPR if we determine that Samsung’s Petition warrants
`institution of an inter partes review.
`The ground of unpatentability asserted in the instant Petition is the
`same as that presented in the Micron IPR. Compare Pet. 5, with IPR2016-
`00406, Paper 1, 5; see also Ex. 1023, 231 (comparison document showing
`redlined differences between the Micron IPR Petition and Samsung’s
`Petition). Samsung states that its Petition includes the same ground and
`arguments as that in the Micron IPR, and notes that it challenges the same
`claims of the same patent, relies on the same expert declaration, and is based
`on the same ground and combination of prior art submitted in the Micron
`IPR Petition. Mot. 4.
`We previously determined, upon consideration of the Micron IPR
`Petition and Flamm’s Preliminary Response, that the record in the Micron
`IPR established a reasonable likelihood that the Micron Petitioners would
`prevail with respect to all challenged claims on the presented ground.
`IPR2017-00406, Paper 10, 16–17. Given the identical ground and evidence
`presented in the present proceeding, we likewise determine that Samsung’s
`Petition warrants institution on the presented ground. We rely on, and
`hereby incorporate by reference, the reasoning set forth in our Decision on
`Institution in the Micron IPR. See id. at 6–17.
`
`
`1 The cited page numbers in Ex. 1023 refer to the numbers added by
`Samsung in the bottom left corner of the page.
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`3
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`IPR2017-01748
`Patent 5,711,849
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`III. GRANT OF MOTION FOR JOINDER
`Having determined that Samsung’s Petition warrants institution, we
`must determine whether to exercise our discretion to join Samsung as a party
`to the Micron IPR. As the moving party, Samsung bears the burden of
`showing that joinder is appropriate. 37 C.F.R. §§ 42.20(c), 42.122(b). A
`motion for joinder should: (1) set forth the reasons why joinder is
`appropriate; (2) identify any new grounds of unpatentability; (3) explain
`what impact (if any) joinder would have on the trial schedule; and (4)
`address specifically how briefing and discovery may be simplified. See
`Frequently Asked Question (“FAQ”) H5 on the Board’s website at
`https://go.usa.gov/xRHCf.
`As noted, Samsung’s Petition asserts the same ground of
`unpatentability on which we instituted review in the Micron IPR. See Mot.
`4; Pet. 5; Ex. 1023, 23; IPR2017-00406, Paper 10, 17. Samsung also relies
`on the same prior art analysis and expert testimony submitted by the Micron
`Petitioners. See Mot. 4. Indeed, Samsung’s Petition is identical to the
`Micron IPR Petition with respect to the ground on which review was
`instituted in the Micron IPR. See id.; Ex. 1023, 23–94. Thus, this inter
`partes review does not present any ground or matter not already at issue in
`the Micron IPR.
`If joinder is granted, “Samsung explicitly agrees to take an
`‘understudy’ role” in the joined proceeding, so long as any of the Micron
`Petitioners remains an active party. Mot. 6. In particular, Samsung agrees
`that, in the joined proceeding,
`a) all filings by Samsung in the joined proceeding be
`consolidated with the filings of [the Micron Petitioners], unless
`a filing concerns issues solely involving Samsung; b) Samsung
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`IPR2017-01748
`Patent 5,711,849
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`shall not be permitted to raise any new grounds not already
`instituted by the Board in the Micron IPR, or introduce any
`argument or discovery not already introduced by [the Micron
`Petitioners]; c) Samsung shall be bound by any agreement
`between [Flamm] and [the Micron Petitioners] concerning
`discovery and/or depositions; and d) Samsung at deposition shall
`not receive any direct, cross examination or redirect time beyond
`that permitted under either 37 C.F.R. § 42.53 or any agreement
`between [Flamm] and [the Micron Petitioners].
`Id. at 6–7 (citing Noven Pharmas., Inc. v. Novartis AG, Case IPR2014-
`00550, slip. op. at 5 (PTAB April 10, 2015) (Paper 38)). Because Samsung
`will not assume an active role in the Micron IPR “[u]nless and until [the
`Micron Petitioners] cease to participate” in the Micron IPR, Samsung
`submits that joinder will not impact the trial schedule for the Micron IPR.
`Id.
`
`The Micron Petitioners state that they “do not object to joinder if
`Samsung is limited to a truly passive role, but they do object to the extent
`Samsung’s terms go beyond a truly passive role or would prompt [Flamm]
`to attempt to raise a privity challenge based on any required coordination.”
`Opp. 3. In particular, the Micron Petitioners argue that “Samsung’s motion
`appears to require coordination with” the Micron Petitioners, and “seeks at
`least some deposition examination time.” Id. at 3–4 (citing Mot. 7).
`According to the Micron Petitioners, this “would create additional and
`unnecessary work” for them, and would increase the complexity and cost of
`the Micron IPR. Id. at 4. Additionally, the Micron Petitioners argue that,
`due to Samsung’s earlier bar date, they “have taken great care not to
`coordinate or work with Samsung” on the Micron IPR “in order to avoid any
`argument by [Flamm] regarding privity.” Id. The Micron Petitioners further
`argue that “[t]hey should not be forced to do so now in the absence of either”
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`IPR2017-01748
`Patent 5,711,849
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`a Board ruling that such coordination “will not allow [Flamm] to raise a
`privity or challenge” or Flamm’s “waiver of the bar date issue.” Id. at 4–5.
`Samsung replies that “the consolidation of filings as referenced in
`Samsung’s Motion simply refers to the fact that any paper filed by the
`Petitioners (including Samsung, if joined) that relates to issues common to
`all Petitioners will be filed as a consolidated filing,” and “the reference to
`deposition time in Samsung’s Motion was not a request for deposition time
`but simply an agreement to conditions set forth in other Board decisions.”
`Reply 2. Samsung states that “to alleviate any concerns raised” in the
`Opposition,
`Samsung further agrees that until the Micron Petitioners
`otherwise agree or cease participation in the proceeding: (1)
`Samsung will not participate in any filings or discovery unless
`the filing or discovery involves an issue solely relating to
`Samsung; and (2) Samsung will not present oral argument unless
`oral argument concerns an issue solely relating to Samsung.
`Id. at 3.
`Having considered Samsung’s Motion, as well as the Micron
`Petitioners’ Opposition and Samsung’s Reply thereto, we agree with
`Samsung that joinder with the Micron IPR is appropriate under the particular
`facts and circumstances of this case. Samsung’s Petition does not assert any
`new grounds of unpatentability that is not already being considered in the
`Micron IPR, it relies on the same arguments and evidence, and it does not
`require any modification of the existing schedule. Accordingly, we grant
`Samsung’s Motion for Joinder, subject to the requirements set forth in the
`Order below.
`
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`6
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`IPR2017-01748
`Patent 5,711,849
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`IV. ORDER
`
`Accordingly, it is
`ORDERED that Samsung’s Motion for Joinder (Paper 3) is granted;
`FURTHER ORDERED that the ground on which IPR2017-00406 was
`instituted is unchanged, and no other grounds are instituted in the
`consolidated proceeding beyond those set forth in IPR2017-00406, Paper 10;
`FURTHER ORDERED that the Scheduling Order in place in
`IPR2017-00406 shall continue to govern the joined proceeding;
`FURTHER ORDERED that in IPR2017-00406, any paper, except for
`a motion that does not involve the other party, shall be filed by the Micron
`Petitioners as a single, consolidated filing on behalf of the Micron
`Petitioners and Samsung, pursuant to the word count or page limits set forth
`in 37 C.F.R. § 42.24, and the Micron Petitioners will identify each such
`filing as a consolidated filing;
`FURTHER ORDERED that except as otherwise agreed by all parties,
`counsel for the Micron Petitioners will conduct cross-examination and other
`discovery on behalf of the Micron Petitioners and Samsung, and that Flamm
`is not required to provide separate discovery responses or additional
`deposition time as a result of the joinder;
`FURTHER ORDERED that the Micron Petitioners and Samsung
`collectively will designate attorneys to present at the oral hearing (if
`requested and scheduled) as a consolidated presentation;
`FURTHER ORDERED that Samsung will not participate in any
`filings or discovery, or participate in the oral hearing (if requested and
`scheduled), unless an issue solely relating to Samsung is involved;
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`7
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`IPR2017-01748
`Patent 5,711,849
`
`
`FURTHER ORDERED that IPR2017-01748 is terminated under
`37 C.F.R. § 42.72, and all further filings in this proceeding are to be made in
`IR2017-00406;
`FURTHER ORDERED that a copy of this Decision will be entered
`into the records of IPR2017-00406 and IPR2017-01748; and
`FURTHER ORDERED that the case caption in IPR2017-00406 shall
`be changed in accordance with the attached example.
`
`
`PETITIONER:
`Naveen Modi
`Joseph E. Palys
`Chetan R. Bansal
`PAUL HASTINGS LLP
`PH-Samsung-Flamm-IPR@paulhastings.com
`
`
`PATENT OWNER:
`Christopher Frerking
`chris@ntknet.com
`
`
`
`
`
`
`8
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICRON TECHNOLOGY, INC.,
`INTEL CORPORATION, GLOBALFOUNDRIES U.S., INC., and
`SAMSUNG ELECTRONICS COMPANY, LTD.,
`Petitioners,
`
`v.
`
`DANIEL L. FLAMM,
`Patent Owner.
`____________
`
`Case IPR2017-004061
`Patent 5,711,849
`____________
`
`
`
`1 Samsung Electronics Company, Ltd. was joined as a party to this
`proceeding via Motion for Joinder in IPR2017-01748.
`
`
`
`