Trials@uspto.gov
`571-272-7822
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper 13
`Entered: July 31, 2020
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DELL INC.; DELL PRODUCTS LP;
`LENOVO (UNITED STATES) INC.; and
`HP INC.,
`Petitioner,
`v.
`NEODRON LTD.,
`Patent Owner.
`
`IPR2020-00731
`Patent 9,024,790 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`HOWARD, 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
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper 13
`Entered: July 31, 2020
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DELL INC.; DELL PRODUCTS LP;
`LENOVO (UNITED STATES) INC.; and
`HP INC.,
`Petitioner,
`v.
`NEODRON LTD.,
`Patent Owner.
`
`IPR2020-00731
`Patent 9,024,790 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`HOWARD, 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
`
`
`
`
`
`
`
`
`
`IPR2020-00731
`Patent 9,024,790 B2
`
`INTRODUCTION
`A. Background and Summary
`Dell Inc., Dell Products LP, Lenovo (United States) Inc., and HP Inc.
`(collectively, “Petitioner”) filed (1) a Petition to institute an inter partes
`review (Paper 4, “Pet.”) of claims 1–24 of U.S. Patent No. 9,024,790 B2
`(Ex. 1001, “the ’790 patent”); and (2) a Motion for Joinder (Paper 5, “Mot.”)
`with Samsung Electronics Co. v. Neodron Ltd., IPR2020-00515 (“Samsung
`IPR). We instituted an inter partes review of the Samsung IPR on July 1,
`2020. Samsung IPR, Paper 8. Neodron Ltd. (“Patent Owner”) did not file a
`Patent Owner Preliminary Response or an Opposition to Petitioner’s Motion
`for Joinder in this proceeding.
`We have authority under 35 U.S.C. § 314(a), which provides that an
`inter partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” For reasons discussed below, we institute
`an inter partes review of claims 1–24 and grant Petitioner’s Motion for
`Joinder.
`B. Real Parties in Interest
`Petitioner identifies Dell Products LP, Dell Inc., Lenovo (United
`States) Inc., and HP Inc. as real parties in interest. Pet. 2. Petitioner also
`identifies Dell Technologies Inc., Lenovo Group Ltd., and Microsoft Corp.
`as real parties in interest without admitting that those parties are in fact real
`parties in interest. Id.
`C. Related Matters
`The parties identify the following proceedings in which the ’790
`patent is asserted. Neodron Ltd. v. Dell Technologies, Inc., No. 6:19-cv-
`00318-ADA (W.D. Tex.); Neodron Ltd. v. HP Inc., 6-19-cv-00319-ADA
`
`2
`
`
`
`IPR2020-00731
`Patent 9,024,790 B2
`(W.D. Tex.); Neodron Ltd. v. Lenovo Group Ltd. et al, 6-19-cv-00320 (W.D.
`Tex.); In the matter of Certain Touch-Controlled Mobile Devices,
`Computers, and Components Thereof, Inv. No. 337-TA-1162 (ITC); and
`Neodron Ltd. v. Samsung Electronics Co., Ltd., No. 6:19-cv-00398-ADA
`(W.D. Tex.). Pet. 3; Paper 7, 2 (Patent Owner’s Mandatory Notices).
`Petitioner further identifies a pending inter partes review of the
`’790 patent, proceedings asserting U.S. Patent No 8,102,286 (the ’286
`patent), which is a parent of the ’790 patent, and an inter partes review
`petition relating to the ’286 patent. Pet. 3–4.
`D. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1–24 would have been unpatentable on
`the following grounds:
`35 U.S.C. §1
`Claim(s) Challenged
`1, 7, 8, 13, 14, 19–24 102(b)2
`1, 2, 5–8, 12–14, 18–
`103(a)
`24
`4, 10, 11, 16, 17
`103(a)
`
`1 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
`U.S.C. §§ 102, 103 that became effective on March 16, 2013. Because the
`’790 patent issued from an application filed before March 16, 2013, we
`apply the pre-AIA versions of the statutory bases for unpatentability.
`2 Although the Petition only identifies section 103 as a basis for
`unpatentability in the section titled “Precise Relief Requested,” the Petition
`sets forth that claims 1, 7, 8, 13, 14, and 19–24 are either anticipated or
`rendered obvious by Jahier. Compare Pet. 5 (Precise Relief Requested)
`(arguing claims 1, 2, 5–8, 12–14, and 18–24 are obvious) with id. at 19–40
`(arguing claims 1, 7, and 13 are either anticipated or obvious), 46–52
`(arguing Jahier discloses the additional limitations recited in claims 8, 14,
`and 19–24).
`3 US 5,525,908, issued June 11, 1996 (Ex. 1005).
`4 US 5,760,715, issued June 2, 1998 (Ex. 1006).
`
`Reference(s)/Basis
`Jahier3
`
`Jahier
`Jahier, Senk4
`
`3
`
`
`
`35 U.S.C. §1
`103(a)
`103(a)
`
`Reference(s)/Basis
`Jahier, QT601615
`Jahier, West6
`
`IPR2020-00731
`Patent 9,024,790 B2
`Claim(s) Challenged
`5, 12, 18
`3, 9, 15
`
`Petitioner also relies on a Declaration of Dr. Benjamin B. Bederson,
`Ph.D., filed as Exhibit 1002 (“Bederson Declaration”).
`INSTITUTION OF INTER PARTES REVIEW
`The Petition in this proceeding asserts the same grounds of
`unpatentability as the ones on which we instituted review in the Samsung
`IPR. Compare Pet. 19–69, with Samsung IPR, Paper 8 at 6. Indeed,
`Petitioner contends that the Petition “is a carbon copy of the original
`Samsung IPR petition in all material respects. The only substantive changes
`are in the introduction to identify the correct Petitioner and the mandatory
`notices under 37 C.F.R. § 42.8(b).” Mot. 1; see also id. at 5–6.
`Patent Owner did not file a Preliminary Response in the instant
`proceeding.
`For the same reasons set forth in our institution decision in the
`Samsung IPR, we determine that the information presented in the Petition
`shows a reasonable likelihood that Petitioner would prevail in showing that
`claims 1–24 are unpatentable. See Samsung IPR, Paper 8 at 10–17.
`Accordingly, we institute an inter partes review on the same grounds as the
`ones on which we instituted review in the Samsung IPR.
`
`
`5 Quantum Research Group QT60161 16 Key QMatrix Keypanel Sensor IC
`Datasheet (2002) (Ex. 1007)
`6 US 5,831,597, issued Nov. 3, 1998 (Ex. 1008).
`
`4
`
`
`
`IPR2020-00731
`Patent 9,024,790 B2
`GRANT OF MOTION FOR JOINDER
`We instituted trial in the Samsung IPR on July 1, 2020. Samsung
`IPR, Paper 8. Petitioner filed a Motion for Joinder on March 30, 2020. Mot.
`Thus, Petitioner’s Motion for Joinder is timely because joinder was
`requested no later than one month after trial was instituted in the Samsung
`IPR. See 37 C.F.R. § 42.122(b) (2020).
`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 existing review; and (4) address specifically how briefing
`and discovery may be simplified. See Kyocera Corp. v. Softview LLC, Case
`IPR2013-00004, Paper 15, (PTAB Apr. 24, 2013).
`The Petition in this case asserts the same unpatentability grounds on
`which we instituted review in the Samsung. See Mot. 1–2. Petitioner relies
`“on the same grounds relying on the same prior art and evidence, including a
`declaration that is from the same expert.” See id. Indeed, the Petition is
`nearly “a carbon copy” of the petition filed by the petitioner in the Samsung
`IPR. See id. at 1. Thus, this inter partes review does not present any ground
`or matter not already at issue in the Samsung IPR.
`
`5
`
`
`
`IPR2020-00731
`Patent 9,024,790 B2
`If joinder is granted, Petitioner anticipates participating in the
`proceeding in a limited capacity absent termination of the Samsung IPR
`petitioner as a party. Mot. 2. Petitioner agrees that “[t]he Samsung
`Petitioner will maintain the lead role in the proceedings so long as it is a
`party to the proceedings and is not estopped under § 315(e)(1) [and that]
`Petitioner will only assume the lead role in the proceedings if the Samsung
`Petitioner is no longer a party to the proceedings or unable to advance
`arguments for one or more claims, or grounds, for example, because of
`§ 315(e)(1).” Id. Petitioner further represents that it “will not seek
`additional depositions or deposition time, and will coordinate deposition
`questioning and hearing presentations with the Samsung Petitioner.” Id.
`at 3. Because Petitioner expects to participate only in a limited capacity,
`Petitioner submits that “joinder will not add any new substantive issues,
`delay the schedule, burden deponents, or increase needless filings, any
`additional costs on the Patent Owner would be minimal.” Id.
`Patent Owner does not oppose the Motion for Joinder and has not
`disputed any of Petitioner’s assertions.
`We agree with Petitioner that joinder with the Samsung IPR is
`appropriate under the circumstances. Accordingly, we grant Petitioner’s
`Motion for Joinder.
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–24 of the ’790 patent is instituted in IPR2020-00731;
`FURTHER ORDERED that the Motion for Joinder with IPR2020-
`00515 is granted, and Petitioner is joined as a party to IPR2020-00515;
`
`6
`
`
`
`IPR2020-00731
`Patent 9,024,790 B2
`FURTHER ORDERED that all further filings by Petitioner and Patent
`Owner, except for those which concern a request for rehearing of this
`decision, shall be made only in IPR2019-00515;
`FURTHER ORDERED that, subsequent to joinder, the grounds and
`claims for trial in IPR2019-00515 remain unchanged;
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`Order in place for IPR2019-00515 (Papers 9, 10) remains unchanged,
`subject to any change already made by stipulation between Patent Owner
`and Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`(collectively, “Samsung”);
`FURTHER ORDERED that, subsequent to joinder, Petitioner is
`bound by every paper filed by and every representation made by Samsung in
`IPR2020-00515, except for papers and representations regarding settlement
`between Samsung and Patent Owner;
`FURTHER ORDERED that Petitioner shall make no filing and take
`no action in the joined proceeding unless (1) Samsung settles with Patent
`Owner, and a Motion to Terminate Samsung from the joined proceeding has
`been filed by Samsung, or (2) the filing is a motion to terminate the
`proceeding with respect to Petitioner, a settlement agreement between
`Petitioner and Patent Owner, or a request to keep settlement agreement
`separate under 37 C.F.R. § 42.74(c);
`FURTHER ORDERED that Petitioner shall not receive any direct,
`cross examination, or redirect time beyond that permitted for Samsung
`alone, under either 37 C.F.R. § 42.53 or any agreement between Samsung
`and Patent Owner;
`FURTHER ORDERED that the case caption in IPR2020-00515 shall
`be changed in accordance with the attached example; and
`
`7
`
`
`
`IPR2020-00731
`Patent 9,024,790 B2
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2020-00515.
`
`8
`
`
`
`IPR2020-00731
`Patent 9,024,790 B2
`FOR PETITIONER:
`
`Christopher Douglas
`Lauren Bolcar
`ALSTON & BIRD LLP
`Christopher.douglas@alston.com
`Lauren.bolcar@alston.com
`
`
`James Heintz
`Robert Duergi
`DLA Piper LLP (US)
`Jim.heintz@dlapiper.com
`Robert.duergi@dlapiper.com
`
`Aliza Carrano
`Philip Eklem
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT AND DUNNER, LLP
`Aliza.carrano@finnegan.com
`Philip.eklem@finnegan.com
`
`
`
`
`FOR PATENT OWNER:
`Kent Shum
`Neil A. Rubin
`RUSS AUGUST & KABAT
`kshum@raklaw.com
`nrubin@raklaw.com
`
`9
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`Paper 13
`Entered: July 31, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.;
`SAMSUNG ELECTRONICS AMERICA, INC.;
`DELL INC.; DELL PRODUCTS LP;
`LENOVO (UNITED STATES) INC.; and
`HP INC.,
`Petitioners,
`v.
`NEODRON LTD.,
`Patent Owner.
`
`IPR2020-005151
`Patent 9,024,790 B2
`
`
`
`
`
`
`
`
`
`
`
`
`1 Dell Inc., Dell Products LP, Lenovo (United States) Inc., and HP Inc. were
`joined as a party to this proceeding via a Motion for Joinder in IPR2020-
`00731.
`
`
`
`
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