Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 12
` Entered: May 1, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`
`
`
`
`
`
`
`
`
`BARKAN WIRELESS IP HOLDINGS, L.P.,
`Patent Owner.
`____________
`
`Case IPR2019-00100
`Patent No. 8,014,284 B2
`______________
`
`
`Before MEREDITH C. PETRAVICK, WILLIAM V. SAINDON, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`ENGELS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Instituting Inter Partes Review
`35 U.S.C. § 314
`Granting Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper No. 12
` Entered: May 1, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`
`
`
`
`
`
`
`
`
`BARKAN WIRELESS IP HOLDINGS, L.P.,
`Patent Owner.
`____________
`
`Case IPR2019-00100
`Patent No. 8,014,284 B2
`______________
`
`
`Before MEREDITH C. PETRAVICK, WILLIAM V. SAINDON, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`ENGELS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Instituting Inter Partes Review
`35 U.S.C. § 314
`Granting Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`IPR2019-00100
`Patent 8,014,284 B2
`
`
`INTRODUCTION
`I.
`Samsung Electronics America, Inc. (“Petitioner”) filed a Petition
`under 35 U.S.C. § 311 requesting inter partes review of claims 1–21 of U.S.
`Patent No. 8,014,284 B2 (Ex. 1001, “the ’284 patent”). Paper 1 (“Pet.”).
`Petitioner also filed a Motion for Joinder with Cellco Partnership d/b/a
`Verizon Wireless v. Barkan Wireless IP Holdings, L.P., Case IPR2018-
`01659. Paper 3.
`Barkan Wireless IP Holdings, L.P. (“Patent Owner”) filed a
`Preliminary Response. Paper 6 (“Prelim. Resp.”). Patent Owner did not
`respond to Petitioner’s Motion for Joinder.
`We have authority under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted unless the information presented in
`the Petition and the Preliminary Response shows that “there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R
`§ 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the
`reasons described below, we institute an inter partes review of the
`challenged claims and grant Petitioner’s Motion for Joinder.
`
`II.
`
`BACKGROUND
`
`A. Real Party-in-Interest
`Petitioner identifies as real parties-in-interest Samsung Electronics
`America, Inc. and Samsung Electronics Co., Ltd. Pet. 5. Petitioner
`additionally states that “[n]o unnamed entity is funding, controlling, or
`otherwise has an opportunity to control or direct this Petition or Petitioner’s
`participation in any resulting IPR.” Id.
`
`2
`
`
`
`IPR2019-00100
`Patent 8,014,284 B2
`
`
`B. Related Proceedings
`Petitioner states that the ’284 patent is being asserted in Barkan
`Wireless IP Holdings, LP v. Samsung Electronics Co., Ltd. et al., No. 2:18-
`cv-28 (E.D. Tex.). Pet. 5. Patent Owner states that the parties’ district-court
`litigation is set for a jury trial in August 2019. Prelim. Resp. 2, 33, 36.
`The ’284 patent is also challenged in IPR2018-01186 based on a
`petition filed by United Patents Inc. and in IPR2018-01659 based on a
`petition filed by Cellco Partnership d/b/a Verizon Wireless.
`
`INSTITUTION OF INTER PARTES REVIEW
`III.
`In IPR2018-01659, we instituted an inter partes review of claims 1–
`21 of the ’284 patent on the following grounds:
`
`3
`
`
`
`IPR2019-00100
`Patent 8,014,284 B2
`
`
`Prior Art
`Bergenwall1
`
`Claims Challenged
`Basis
`Obviousness 1–3, 5, 6, 10, 12–14,
`16–18, 20, 21
`Obviousness 9, 16, 17
`Obviousness 6–8, 14, 15
`Obviousness 1–3, 5, 9, 10, 12, 13,
`16, 17, 20
`Obviousness 6–8, 14, 15
`Bergenwall, Thro, Sudia5
`Obviousness 4, 11, 19
`Bergenwall, Vedel6
`Bergenwall, Vedel and/or Kari7 Obviousness 1–6
`Cellco P’ship, Case IPR2018-01659, slip op. at 2, 7 (PTAB Mar. 27, 2019)
`(Paper 10).
`Petitioner seeks to join IPR2018-01659 and states that its Petition is
`“intentionally identical to the Verizon IPR in all substantive aspects.” Paper
`3 at 2; accord id. at 6–8 (noting that issues common to the two proceedings
`include substantively identical exhibits and declaration testimony); Pet. 6
`(stating that the issues raised this Petition “are substantively identical to
`those in the Verizon IPR petition”). Patent Owner’s Preliminary Response
`is substantively identical to the Preliminary Response filed in IPR2018-
`
`Bergenwall, Shibasaki2
`Bergenwall, Borgelt3
`Bergenwall, Thro4
`
`
`1 Bergenwall (WO 1999/035800; publ. July 15, 1999; filed Mar. 11, 1997;
`issued Apr. 13, 2004). Ex. 1007.
`2 Shibasaki et al. (US 6,724,731; filed June 9, 1998; issued Apr. 20, 2004).
`Ex. 1008.
`3 Borgelt et al. (US 5,398,285; filed Dec. 30, 1993; issued Mar. 14, 1995).
`Ex. 1009.
`4 Thro et al. (US 5,864,764; filed Nov. 25, 1996; issued Jan. 26, 1999). Ex.
`1010.
`5 Subia (US 6,009,177; filed Feb. 19, 1997; issued Dec. 28, 1999). Ex.
`1011.
`6 Vedel (US 5,974,308; filed Nov. 13, 1996; issued Oct. 26, 1999). Ex.
`1019.
`7 Kari (WO 97/26739; filed Jan. 14, 1997; publ. July 24, 1997). Ex. 1022.
`
`4
`
`
`
`IPR2019-00100
`Patent 8,014,284 B2
`
`01659. Compare Paper 10, with Cellco P’ship, Case IPR2018-01659, Paper
`8.
`
`For the same reasons stated in our Decision Instituting Inter Partes
`Review in IPR2018-01659, we determine that the information presented in
`the Petition shows a reasonable likelihood that Petitioner would prevail in
`showing that at least one of the challenged claims is unpatentable. See
`Cellco P’ship, Case IPR2018-01659 (PTAB Mar. 27, 2019) (Paper 10).
`Accordingly, we institute an inter partes review on the same grounds as
`those on which we instituted in IPR2018–01659. Id.
`
`IV. GRANT OF MOTION FOR JOINDER
`Petitioner filed its Motion for Joinder concurrently with its Petition on
`October 24, 2018, prior to the March 27, 2019 date of institution in
`IPR2018-01659. Petitioner’s Motion for Joinder is therefore timely. See
`37 C.F.R. § 24.122(b) (stating that a motion for joinder must be filed no later
`than one month after the institution date of the inter partes review for which
`joinder is requested).
`The statutory provision governing joinder in inter partes review
`proceedings is 35 U.S.C. § 315(c), which reads:
`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.
`
`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
`
`5
`
`
`
`IPR2019-00100
`Patent 8,014,284 B2
`
`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).
`Petitioner asserts the same grounds of unpatentability on which we
`instituted inter partes review in IPR2018-01659. As noted above, Petitioner
`relies on the same prior art, substantively the same declaration testimony,
`and substantively the same analysis as that at issue in IPR2018-01659.
`Thus, this inter partes review does not present any ground or matter not
`already at issue in IPR2018-01659.
`Also, Petitioner “agrees to work closely with Verizon to avoid
`redundancies wherever possible [and] to consolidate[] filings for all
`substantive papers in the proceeding.” Paper 3 at 7. Among other things,
`Petitioner further states that it agrees to (i) incorporate its filings with those
`of Verizon, (ii) be jointly responsible with Verizon for the consolidated
`filings, and (iii) not be permitted to make arguments separately from those
`advanced by Petitioner and Verizon in the consolidated filings. Id.
`Petitioner also agrees to consolidated discovery with Verizon and to the
`same trial schedule set in IPR2018-01659. Id. at 7–8.
`We agree with Petitioner that joinder with IPR2018-01659 is
`appropriate under the circumstances. Accordingly, we grant Petitioner’s
`Motion for Joinder.
`
`V. ORDER
`In view of the foregoing, it is hereby:
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–21 of the ’284 patent is instituted with respect to all
`ground set forth in the Petition;
`
`6
`
`
`
`IPR2019-00100
`Patent 8,014,284 B2
`
`
`FURTHER ORDERED that the Motion for Joinder with IPR2018-
`01659 is granted, and Samsung Electronics America, Inc. is joined as a
`petitioner in IPR2018-01659;
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`trial in IPR2018-01659 remain unchanged;
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`Order in place for IPR2018-01659 (Paper 11) remains unchanged;
`FURTHER ORDERED that, subsequent to joinder, any filing made in
`IPR2018-01659 shall be considered to have been made in IPR2019-00100;
`FURTHER ORDERED that no further filings shall be made in
`IPR2019-00100 unless the panel provides prior authorization, except that
`Petitioner may file papers in IPR2019-00100 to the extent necessary to
`comply with 37 C.F.R. § 42.8 (Mandatory Notices);
`FURTHER ORDERED that in IPR2018-01659, except for a motion
`that only involves one Petitioner individually, Petitioners will fill each paper
`as a single, consolidated filing, subject to the page limits set forth in
`37 C.F.R. § 42.24, and Petitioners shall identify each such filing as a
`consolidated filing;
`FURTHER ORDERED that Petitioners shall collectively designate
`attorneys for cross-examination of any witness produced by Patent Owner
`and the redirect of any witness produced by Petitioners, within the
`timeframes set forth in 37 C.F.R. § 42.53(c) or as agreed to by the parties;
`FURTHER ORDERED that Petitioners shall collectively designate
`attorneys to present a consolidated argument at any oral hearing that may be
`requested and scheduled;
`
`7
`
`
`
`IPR2019-00100
`Patent 8,014,284 B2
`
`
`FURTHER ORDERED that the case caption in IPR2018-01659 shall
`be changed to reflect joinder of Samsung Electronics America, Inc. as a
`petitioner in accordance with the attached example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2018-01659 and that the Orders set forth herein shall
`apply to that proceeding.
`
`
`
`
`
`
`8
`
`
`
`IPR2019-00100
`Patent 8,014,284 B2
`
`PETITIONER:
`
`James M. Heintz
`DLA PIPER LLP (US)
`jim.heintz@dlapiper.com
`
`
`PATENT OWNER:
`
`Douglas R. Wilson
`Michael F. Heim
`HEIM, PAYNE & CHORUSH, LLP
`dwilson@hpcllp.com
`mheim@hpcllp.com
`
`
`CELLCO PARTNERSHIP d/b/a VERIZON WIRELESS:
`
`Kevin P. Anderson
`Scott A. Felder
`WILEY REIN LLP
`kanderson@wileyrein.com
`sfelder@wileyrein.com
`
`
`9
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No.
` Entered:
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS, and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners,
`
`v.
`
`
`BARKAN WIRELESS IP HOLDINGS, L.P.,
`Patent Owner.
`____________
`
`Case IPR2018-016591
`Patent No. 8,014,284 B2
`______________
`
`
`
`
`
`
`
`
`
`
`
`1 Samsung Electronics America, Inc., which filed a petition in IPR2019-
`00100, has been joined as a Petitioner in this proceeding.
`
`
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
