Trials@uspto.gov Paper No. 10
`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 IPR2017-01750
`Patent RE 40,264E
`____________
`
`
`
`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)
`
`
`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 IPR2017-01750
`Patent RE 40,264E
`____________
`
`
`
`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)
`
`
`
`IPR2017-01750
`Patent RE 40,264 E
`
`
`I. INTRODUCTION
`Samsung Electronics Company, Ltd. (“Samsung”) filed a Petition
`(Paper 1, “Pet.”) to institute an inter partes review of claims 27–36, 51–55,
`66, 68, and 69 of U.S. Patent No. RE 40,264 E (Ex. 1001, “the ’264 patent”).
`Concurrently with its Petition, Samsung filed a Motion for Joinder (Paper 3,
`“Motion” or “Mot.”), seeking to join, as a Petitioner, with Intel Corp. v.
`Daniel L. Flamm, Case IPR2017-00280 (“the Intel IPR”). Patent Owner
`Daniel L. Flamm (“Flamm”) did not file an opposition to Samsung’s
`Motion. Intel Corporation, Micron Technology, Inc., and
`GLOBALFOUNDRIES U.S. Inc. (collectively, “the Intel Petitioners”), the
`petitioners in the Intel 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.
`
`
`
`
`
`
`IPR2017-01750
`Patent RE 40,264 E
`
`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 Intel IPR if we determine that Samsung’s Petition warrants
`institution of an inter partes review.
`The grounds of unpatentability asserted in the instant Petition are the
`same as those presented in the Intel IPR. Compare Pet. 5–6, with IPR2016-
`00280, Paper 2, 4–5; see also Ex. 1023, 181 (comparison document showing
`redlined differences between the Intel IPR Petition and Samsung’s Petition).
`Samsung states that its Petition includes the same grounds and arguments as
`those in the Intel 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
`grounds and combination of prior art submitted in the Intel IPR Petition.
`Mot. 4–5.
`We previously determined, upon consideration of the Intel IPR
`Petition and Flamm’s Preliminary Response, that the record in the Intel IPR
`established a reasonable likelihood that the Intel Petitioners would prevail
`with respect to all challenged claims on all presented grounds. IPR2017-
`00280, Paper 9, 36–37. Given the identical grounds and evidence presented
`in the present proceeding, we likewise determine that Samsung’s Petition
`warrants institution on the presented grounds. We rely on, and hereby
`incorporate by reference, the reasoning set forth in our Decision on
`Institution in the Intel IPR. See id. at 10–36.
`
`
`1 The cited page numbers in Ex. 1023 refer to the numbers added by
`Samsung in the bottom left corner of the page.
`
`3
`
`
`
`
`IPR2017-01750
`Patent RE 40,264 E
`
`
`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 Intel 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 grounds of
`unpatentability on which we instituted review in the Intel IPR. See Mot. 4–
`5; Pet. 5–6; Ex. 1023, 18; IPR2017-00280, Paper 9, 36–37. Samsung also
`relies on the same prior art analysis and expert testimony submitted by the
`Intel Petitioners. See Mot. 4–5. Indeed, Samsung’s Petition is identical to
`the Intel IPR Petition with respect to the grounds on which review was
`instituted in the Intel IPR. See id.; Ex. 1023, 18–103. Thus, this inter partes
`review does not present any grounds or matter not already at issue in the
`Intel IPR.
`If joinder is granted, “Samsung explicitly agrees to take an
`‘understudy’ role” in the joined proceeding, so long as any of the Intel
`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 Intel Petitioners], unless a
`filing concerns issues solely involving Samsung; b) Samsung
`shall not be permitted to raise any new grounds not already
`instituted by the Board in the Intel IPR, or introduce any
`4
`
`
`
`
`
`
`IPR2017-01750
`Patent RE 40,264 E
`
`
`argument or discovery not already introduced by [the Intel
`Petitioners]; c) Samsung shall be bound by any agreement
`between [Flamm] and [the Intel 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 Intel 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 Intel IPR “[u]nless and until [the Intel
`Petitioners] cease to participate” in the Intel IPR, Samsung submits that
`joinder will not impact the trial schedule for the Intel IPR. Id. at 7.
`The Intel 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 Intel Petitioners argue that “Samsung’s motion
`appears to require coordination with” the Intel Petitioners, and “seeks at
`least some deposition examination time.” Id. at 3–4 (citing Mot. 7).
`According to the Intel Petitioners, this “would create additional and
`unnecessary work” for them, and would increase the complexity and cost of
`the Intel IPR. Id. at 4. Additionally, the Intel Petitioners argue that, due to
`Samsung’s earlier bar date, they “have taken great care not to coordinate or
`work with Samsung” on the Intel IPR “in order to avoid any argument by
`[Flamm] regarding privity.” Id. The Intel Petitioners further argue that
`“[t]hey should not be forced to do so now in the absence of either” 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.
`
`
`
`
`5
`
`
`
`IPR2017-01750
`Patent RE 40,264 E
`
`
`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 Intel 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 Intel Petitioners’
`Opposition and Samsung’s Reply thereto, we agree with Samsung that
`joinder with the Intel IPR is appropriate under the particular facts and
`circumstances of this case. Samsung’s Petition does not assert any new
`grounds of unpatentability that are not already being considered in the Intel
`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.
`
`
`
`
`
`6
`
`
`
`IPR2017-01750
`Patent RE 40,264 E
`
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that Samsung’s Motion for Joinder (Paper 3) is granted;
`FURTHER ORDERED that the grounds on which IPR2017-00280
`was instituted are unchanged, and no other grounds are instituted in the
`consolidated proceeding beyond those set forth in IPR2017-00280, Paper 9;
`FURTHER ORDERED that the Scheduling Order in place in
`IPR2017-00280 shall continue to govern the joined proceeding;
`FURTHER ORDERED that in IPR2017-00280, any paper, except for
`a motion that does not involve the other party, shall be filed by the Intel
`Petitioners as a single, consolidated filing on behalf of the Intel Petitioners
`and Samsung, pursuant to the word count or page limits set forth in
`37 C.F.R. § 42.24, and the Intel Petitioners will identify each such filing as a
`consolidated filing;
`FURTHER ORDERED that except as otherwise agreed by all parties,
`counsel for the Intel Petitioners will conduct cross-examination and other
`discovery on behalf of the Intel 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 Intel 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;
`
`
`
`
`7
`
`
`
`IPR2017-01750
`Patent RE 40,264 E
`
`
`FURTHER ORDERED that IPR2017-01750 is terminated under
`37 C.F.R. § 42.72, and all further filings in this proceeding are to be made in
`IR2017-00280;
`FURTHER ORDERED that a copy of this Decision will be entered
`into the records of IPR2017-00280 and IPR2017-01750; and
`FURTHER ORDERED that the case caption in IPR2017-00280 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
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION, GLOBALFOUNDRIES U.S., INC.,
`MICRON TECHNOLOGY, INC., and
`SAMSUNG ELECTRONICS COMPANY, LTD.,
`Petitioners,
`
`v.
`
`DANIEL L. FLAMM,
`Patent Owner.
`____________
`
`Case IPR2017-002801
`Patent RE 40,264 E
`____________
`
`
`
`1 Samsung Electronics Company, Ltd. was joined as a party to this
`proceeding via a Motion for Joinder in IPR2017-01750.
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
