throbber
Trials@uspto.gov
`571-272-7822
`
`Paper 41
`Date: June 9, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`v.
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
`
`IPR2020-00676
`Patent 7,319,889 B2
`
`
`
`
`
`
`
`
`
`Before MELISSA A. HAAPALA, STACY B. MARGOLIES, and
`SCOTT E. BAIN, Administrative Patent Judges.
`HAAPALA, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`
`

`

`IPR2020-00676
`Patent 7,319,889 B2
`Samsung Electronics Co., Ltd (“Petitioner”) filed a Petition pursuant
`to 35 U.S.C. §§ 311–319 requesting inter partes review of claims 1, 2, 4–6,
`8, 9, 11, and 12 of U.S. Patent No. 7,319,889 B2 (“the ’889 patent”). Paper
`1 (“Pet.”). Petitioner also filed a Motion for Joinder seeking to join
`Petitioner as a party to Coolpad Technologies, Inc. and ZTE (USA) Inc. v.
`Bell Northern Research, LLC, IPR2019-01320 (PTAB) (“1320 IPR”). Paper
`3 (“Mot.”). Bell Northern Research, LLC (“Patent Owner”) filed a “Non-
`Opposition to Petitioner’s Motion for Joinder.” Paper 7 (“Non-Opp.”). In
`its Non-Opposition, Patent Owner requests additional conditions be included
`in any order granting joinder and states it waives its right to a preliminary
`response if we grant Petitioner’s joinder motion. Non-Opp. 7, 2–3.
`Petitioner filed a Reply to Patent Owner’s Non-Opposition. Paper 8
`(“Reply”).
`For the reasons set forth below, we grant Petitioner’s request and
`institute an inter partes review of all challenged claims. We further grant
`Petitioner’s Motion for Joinder.
`I. BACKGROUND
`A. Related Proceedings
`Petitioner and Patent Owner identify the following district court
`litigation involving the ’889 patent: Bell Northern Research, LLC v.
`Samsung Electronics Co., Ltd., et al., Case No. 2:19-cv-00286 (E.D. Tex.);
`Bell Northern Research, LLC v. Coolpad Technologies, Inc., et al., Case No.
`3:18-cv-01783 (S.D. Cal.); and Bell Northern Research, LLC v. ZTE
`Corporation, et al., Case No. 3:18-cv-01786 (S.D. Cal.). See Pet. 1–2;
`Paper 5, 1. The parties state the ’889 patent is involved in the ’1320 IPR.
`Petitioner further states the patent was at issue in Huawei Technologies Co.
`
`2
`
`

`

`IPR2020-00676
`Patent 7,319,889 B2
`v. Bell Northern Research, LLC, IPR2019-01175 (PTAB) (filed June 12,
`2019; terminated Dec. 12, 2019). See Pet. 2.
`Additionally, Petitioner identifies that the ’889 patent is in the same
`family as U.S. Patent No. 8,204,554 B2 and U.S. Patent No. 7,113,811. Id.
`Petitioner states it concurrently filed a petition for inter partes review of the
`8,204,554 patent. Id.
`
`B. Real Parties in Interest
`Petitioner identifies Samsung Electronics America, Inc., as an
`additional real party in interest. Pet. 1. Patent Owner identifies that it is a
`wholly owned subsidiary of Hilco Patent Acquisition 56, LLC, which is
`owned by both Hilco IP Merchant Capital, LLC, and Hilco, Inc. Paper 5, 1.
`II. ANALYSIS
`A. Institution of Inter Partes Review
`Petitioner challenges the same claims on the same grounds of
`unpatentability as the grounds on which we instituted review in the 1320
`IPR. Compare Pet. 3, with 1320 IPR, Paper 18, 5, 40. Petitioner asserts the
`Petition in this proceeding is substantially identical and is based on the same
`prior art combinations and supporting evidence as the Petition in the 1320
`IPR. Pet. 1; Mot. 2. Petitioner further asserts that the declaration submitted
`in support of its contentions is a verbatim copy of the declaration submitted
`in the 1320 IPR. Pet. ii n.1. Patent Owner asserts that if we grant
`Samsung’s joinder motion, it waives its right to a preliminary response in
`this proceeding. Non-Opp. 3.
`We have reviewed the Petition and agree with Petitioner that it is
`substantially identical to the 1320 IPR Petition. Compare Pet. 3–62, with
`1320 IPR, Paper 3, 6–65. For the reasons discussed in our Decision on
`Institution in the 1320 IPR, we determine Petitioner has demonstrated a
`
`3
`
`

`

`IPR2020-00676
`Patent 7,319,889 B2
`reasonable likelihood of prevailing in showing at least one claim of the ’889
`patent is unpatentable. See 1320 IPR, Paper 18. We, therefore, institute
`inter partes review of all challenged claims on all grounds set forth in the
`Petition.
`
`B. Motion for Joinder
`The statutory provision governing joinder in inter partes review
`proceedings is 35 U.S.C. § 315(c), which states:
`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 must be filed “no later than one month
`after the institution date of any inter partes review for which joinder is
`requested.” 37 C.F.R. § 42.122(b) (2019). Moreover, as suggested in
`Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4
`(PTAB Apr. 24, 2013), 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.
`Petitioner contends joinder is appropriate because the Petition
`in this proceeding challenges the same claims of the same patent,
`relies on the same expert declaration, and is based on the same
`grounds and combinations of prior art submitted in the 1320 IPR
`proceeding. Mot. 4–5. Petitioner further asserts joinder will have
`
`4
`
`

`

`IPR2020-00676
`Patent 7,319,889 B2
`minimal impact on the trial schedule because Petitioner consents to
`the existing schedule and there are no new issues for the Board or
`Patent Owner to address. Id. at 6. Petitioner states that it explicitly
`agrees to take an “understudy” role, which will simplify briefing and
`discovery; Petitioner sets forth explicit conditions regarding briefing
`that it agrees will apply provided at least one of the current petitioners
`in the 1320 IPR remains an active party. See id. at 7. Petitioner
`further states it is willing to agree to any other reasonable conditions
`the Board deems necessary before joining Petitioner as a party to the
`1320 IPR. Id. at 8.
`In view of Petitioner’s agreement to abide by the conditions set
`forth in its Motion, Patent Owner does not oppose Petitioner’s motion
`to join as a party to the 1320 IPR proceeding. Non-Opp 2. However,
`Patent Owner requests that several additional conditions, similar to
`those ordered in a previous proceeding involving Petitioner, be
`included in any order granting joinder. See id. at 2–3. Petitioner
`consents to the conditions provided that the original petitioners in the
`1320 IPR proceeding (Coolpad and ZTE) continue to actively
`participate in the proceeding. Reply 2.
`We agree with Petitioner that joinder with the 1320 IPR is appropriate
`under the circumstances. Accordingly, we grant Petitioner’s Motion for
`Joinder, subject to the requirements set forth in the Order below.
`
`
`5
`
`

`

`IPR2020-00676
`Patent 7,319,889 B2
`
`III. ORDER
`
`It is
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review of the ’889 patent is hereby instituted on all grounds set forth in the
`Petition:
`(1) Anticipation of claims 1, 2, 4–6, 8, 9, 11, and 12 by Fukiharu;
`(2) Obviousness of claims 1, 2, 4–6, 8, 9, 11, and 12 over Fukiharu
`and Giel; and
`(3) Obviousness of claims 1, 2, 4–6, 8, 9, 11, and 12 over Numazawa
`and Bradley; and
`FURTHER ORDERED that the Motion for Joinder is granted, and
`Petitioner is joined as a party to IPR2019-01320;
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`trial in IPR2019-01320 remain unchanged;
`FURTHER ORDERED that the Scheduling Order in place in
`IPR2019-01320 will continue to govern the joined proceeding;
`FURTHER ORDERED that all further filings shall be made only in
`IPR2019-01320;
`FURTHER ORDERED that all filings in IPR2019-01320 will be
`consolidated, and no filing by Petitioner Samsung alone will be considered
`without prior authorization by the Board;
`FURTHER ORDERED that except as otherwise agreed by all parties,
`and provided that at least one of Coolpad and ZTE continue to actively
`participate in IPR2019-01320, counsel for Petitioners Coolpad and ZTE will
`conduct cross-examination and discovery on behalf of all petitioners in
`IPR2019-01320 and that Patent Owner is not required to provide separate
`discovery responses or additional deposition time as a result of the joinder;
`
`6
`
`

`

`IPR2020-00676
`Patent 7,319,889 B2
`FURTHER ORDERED that Petitioner Samsung will not participate in
`any filings or discovery, or participate in the oral hearing (if requested and
`scheduled), unless an issue solely involving Samsung is involved or unless
`both Petitioners Coolpad and ZTE cease to actively participate in IPR2019-
`01320;
`FURTHER ORDERED that the case caption in IPR2019-01320 shall
`be changed in accordance with the attached example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2019-01320.
`
`
`
` .
`
`
`
`
`
`7
`
`

`

`IPR2020-00676
`Patent 7,319,889 B2
`FOR PETITIONER:
`
`Naveen Modi
`Joseph E. Palys
`Chetan Bansal
`Arvind Jairam
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`chetanbansal@paulhastings.com
`arvindjairam@paulhastings.com
`
`
`
`
`FOR PATENT OWNER:
`
`Steven W. Hartsell
`Alexander E. Gasser
`Joseph M. Ramirez
`SKIERMONT DERBY LLP
`shartsell@skiermontderby.com
`agasser@skiermontderby.com
`jramirez@skiermontderby.com
`
`
`
`
`
`
`8
`
`

`

`IPR2020-00676
`Patent 7,319,889 B2
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COOLPAD TECHNOLOGIES, INC., ZTE (USA), INC., and
`SAMSUNG ELECTONICS CO., LTD.,1
`Petitioners,
`v.
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
`
`IPR2019-01320
`Patent 7,319,889 B2
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1 Samsung Electronics Col, Ltd., who filed a petition in IPR2020-00676, has
`been joined as a petitioner to this proceeding.
`
`9
`
`

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