`571-272-7822
`
`Paper 10
`Entered: July 27, 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.
`
`IPR2020-00697
`Patent 7,039,435 B2
`
`
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`
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`
`
`Before BRYAN F. MOORE, STACY B. MARGOLIES, and
`SCOTT E. BAIN, Administrative Patent Judges.
`MOORE, 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
`
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`IPR2020-00697
`Patent 7,039,435 B2
`Samsung Electronics Co., Ltd (“Petitioner”) filed a Petition pursuant
`to 35 U.S.C. §§ 311–319 requesting inter partes review of claims 1–3, 6 of
`U.S. Patent No. 7,039,435 B2 (“the ’435 patent”). Paper 1 (“Pet.”).
`Petitioner also filed a Motion for Joinder seeking to join Petitioner as a party
`to ZTE (USA) Inc. v. Bell Northern Research, LLC, IPR2019-01365 (PTAB)
`(“1365 IPR”). Paper 4 (“Mot.”). Bell Northern Research, LLC (“Patent
`Owner”) filed a “Non-Opposition to Petitioner’s Motion for Joinder.” Paper
`8 (“Non-Opp.”). In its Non-Opposition, Patent Owner requested additional
`conditions be included in any order granting joinder and stated it waives its
`right to a preliminary response if we grant Petitioner’s joinder motion. Non-
`Opp., 2–3. Petitioner filed a Reply to Patent Owner’s Non-Opposition.
`Paper 9 (“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 ’435 patent: Bell Northern Research, LLC v.
`Samsung Electronics Co., Ltd., Case No. 2:19-cv-00286 (E.D. Tex.); Bell
`Northern Research, LLC v. LG Electronics Inc., et al., Case No. 3:18-cv-
`02864 (S.D. Cal.); and Bell Northern Research, LLC v. ZTE Corporation,
`Case No. 3:18-cv-01786 (S.D. Cal.). See Pet. 1–2; Paper 7, 1. The parties
`further identifies the following PTAB proceeding involving the ’435 patent:
`the 1319 IPR; LG Electronics, Inc. v. Bell Northern Research, LLC,
`IPR2020-00319 (PTAB) (filed December 19, 2019); Samsung Electronics
`Co., Ltd. v. Bell Northern Research, LLC, IPR2020-00698 (PTAB) (filed
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`IPR2020-00697
`Patent 7,039,435 B2
`Mar. 10, 2020). Petitioner further identifies the patent was at issue in
`Huawei Technologies Co., Ltd. v. Bell Northern Research, LLC, IPR2019-
`01186 (PTAB) (filed June 11, 2019, terminated December 13, 2019). See
`Pet. 2.
`
`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 7, 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 1365
`IPR. Compare Pet. 3, with 1365 IPR, Paper 13, 4, 39. 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 1365
`IPR. Pet. 1; Mot. 1–2. Petitioner further asserts that the declaration
`submitted in support of its contentions is a verbatim copy of the declaration
`submitted in the 1365 IPR. Pet. iii n.1. Patent Owner asserts that if we grant
`Samsung’s joinder motion, Patent Owner 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 1365 Petition. Compare Pet. 3–69, with 1365
`IPR, Paper 1, 2–66. For the reasons discussed in our Decision on Institution
`in the 1365 IPR, we determine Petitioner has demonstrated a reasonable
`likelihood of prevailing in showing at least one claim of the ’435 patent is
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`IPR2020-00697
`Patent 7,039,435 B2
`unpatentable. See 1365 IPR, Paper 13. 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, 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 1365 IPR
`proceeding. Mot. 4–5. Petitioner further asserts joinder will have
`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 5–6. Petitioner states that it explicitly
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`IPR2020-00697
`Patent 7,039,435 B2
`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 IPR2019-01365 remains an active party. See id. at 6–8. 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
`1365 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 1365 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 petitioner in the
`1365 IPR proceeding (ZTE) continues to actively participate in the
`proceeding. Reply 2.
`We agree with Petitioner that joinder with the 1365 IPR is appropriate
`under the circumstances. Accordingly, we grant Petitioner’s Motion for
`Joinder, subject to the requirements set forth in the Order below.
`
`
`III. ORDER
`
`It is
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review of the ’435 patent is hereby instituted on all grounds set forth in the
`Petition:
`(1) Anticipation of claims 1–3 by Baiker;
`(2) Obviousness of claims 1–3 and 6 over Baiker and Werling;
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`Patent 7,039,435 B2
`(3) Anticipation of claims 1–3 by Irvin; and
`(4) Obviousness of claims 1–3 and 6 over Irvin and Myllymäki;
`(5) Obviousness of claims 1–3 over Irvin and Bodin; and
`(6) Obviousness of claim 6 over Irvin, Bodin, and Myllymäki;
`FURTHER ORDERED that the Motion for Joinder is granted, and
`Petitioner is joined as a party to IPR2019-01365;
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`trial in IPR2019-01365 remain unchanged;
`FURTHER ORDERED that the Scheduling Order in place in
`IPR2019-01365 will continue to govern the joined proceeding;
`FURTHER ORDERED that all further filings shall be made only in
`IPR2019-01365;
`FURTHER ORDERED that all filings in IPR2019-01365 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 ZTE continues to actively participate in IPR2019-01365,
`counsel for Petitioner ZTE will conduct cross-examination and discovery on
`behalf of all Petitioners in IPR2019-01365 and that Patent Owner is not
`required to provide separate discovery responses or additional deposition
`time as a result of the joinder;
`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
`Petitioner ZTE ceases to actively participate in IPR2019-01365;
`FURTHER ORDERED that the case caption in IPR2019-01365 shall
`be changed in accordance with the attached example; and
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`IPR2020-00697
`Patent 7,039,435 B2
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2019-01365.
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`IPR2020-00697
`Patent 7,039,435 B2
`FOR PETITIONER:
`
`Naveen Modi
`Joseph E. Palys
`Quadeer A. Ahmed
`Arvind Jairam
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`quadeerahmed@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
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`IPR2020-00697
`Patent 7,039,435 B2
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COOLPAD TECHNOLOGIES, INC., ZTE (USA), INC., and
`SAMSUNG ELECTRONICS CO., LTD.,1
`Petitioners,
`v.
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
`
`IPR2019-01365
`Patent 7,039,435 B2
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`1 Samsung Electronics Co., Ltd., who filed a petition in IPR2020-00697, has
`been joined as a petitioner to this proceeding.
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