IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners
`
`v.
`
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner
`__________
`
`Case IPR2021-00583
`Patent No. 6,411,941
`__________
`
`PATENT OWNER ANCORA’S OPPOSITION TO
`PETITIONERS’ MOTION FOR JOINDER
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`
`
`Ancora’s Opposition to Petitioners’
`Motion for Joinder
`
`IPR2021-00583
`
`Table of Contents
`
`Page
`
`I.
`II.
`III.
`
`B.
`
`INTRODUCTION ........................................................................................... 1
`BACKGROUND ............................................................................................. 2
`PETITIONER’S MOTION FOR JOINDER SHOULD BE DENIED FOR
`MOOTNESS OR BECAUSE IT WILL UNDULY DELAY THE
`ORIGINAL PROCEEDING ............................................................................ 6
`A.
`The Board Should Terminate the Original Proceeding, Which
`Would Moot this Motion ....................................................................... 6
`Undue Delay in the Original Proceedings Alternatively
`Requires Denying Petitioners’ Motion for Joinder ............................... 9
`IV. THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY THIS
`PETITION .....................................................................................................11
`A.
`The General Plastic Factors Favor Discretionary Denial of
`Samsung’s Joinder Petition .................................................................11
`1.
`Factor 1: Whether the Same Petitioner Previously Filed
`a Petition Directed to the Same Claims of the Same
`Patent, and Factor 3: Whether at the Time of Filing of
`the Second Petition the Petitioner Already Received the
`Patent Owner’s Preliminary Response to the First
`Petition or Received the Board’s Decision on Whether
`to Institute Review in the First Petition ....................................12
`Factor 2: Whether at the Time Of Filing of the First
`Petition the Petitioner Knew of the Prior Art Asserted in
`the Second Petition or Should Have Known of It .....................13
`Factor 4: The Length of Time That Elapsed Between the
`Time the Petitioner Learned of the Prior Art Asserted in
`the Second Petition and the Filing of the Second Petition........14
`Factor 5: Whether the Petitioner Provides Adequate
`Explanation for the Time Elapsed Between the Filings
`of Multiple Petitions Directed to the Same Claims of the
`Same Patent ...............................................................................14
`
`2.
`
`3.
`
`4.
`
`1
`
`

`

`Ancora’s Opposition to Petitioners’
`Motion for Joinder
`
`IPR2021-00583
`
`5.
`6.
`
`7.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Factor 6: The Finite Resources of the Board ............................15
`Factor 7: The Requirement Under 35 U.S.C. §
`316(a)(11) to Issue a final Determination Not Later
`Than 1 Year After the Date on Which the Director
`Notices Institution of Review ...................................................15
`In Total, the General Plastic Factors Weigh Against
`Institution ..................................................................................16
`The Fintiv Factors Favor Discretionary Denial of Samsung’s
`Petition .................................................................................................16
`1.
`Factor 1: Whether a Stay Exists or Is Likely to Be
`Granted If a Proceeding Is Instituted ........................................17
`Factor 2: Proximity of the Court’s Trial Date to the
`Board’s Projected Statutory Deadline .......................................18
`Factor 3: Investment in the Parallel Proceeding by the
`Court and Parties .......................................................................19
`Factor 4: Overlap Between Issues Raised in the Petition
`and in the Parallel Proceeding...................................................20
`Factor 5: Whether the Petitioner and the Defendant in
`the Parallel Proceeding Are the Same Party .............................21
`Factor 6: Other Circumstances That Impact the Board’s
`Exercise of Discretion, Including the Merits ............................21
`In Total, the Fintiv Factors Weigh Against Institution .............21
`7.
`CONCLUSION ..............................................................................................22
`
`
`B.
`
`
`
`V.
`
`
`
`
`
`2
`
`

`

`Ancora’s Opposition to Petitioners’
`Motion for Joinder
`
`IPR2021-00583
`
`Table of Exhibits
`
`Exhibit No.
`Ex. 2001
`Ex. 2002
`Ex. 2003
`Ex. 2004
`
`Ex. 2005
`
`Ex. 2006
`Ex. 2007
`Ex. 2008
`Ex. 2009
`
`Ex. 2010
`Ex. 2011
`
`Ex. 2012
`Ex. 2013
`Ex. 2014
`Ex. 2015
`
`
`Description
`
`RESERVED
`RESERVED
`RESERVED
`Apple Inc.’s N.D. Cal. Patent L.R. 3-3 Disclosures (Invalidity
`Disclosures)
`Defendants HTC America, Inc. and HTC Corporation’s
`Preliminary Non-Infringement and Invalidity Contentions
`RESERVED
`Email requesting permission to file motion to terminate
`Ancora v. Samsung Fourth Amended Scheduling Order
`Expert Report of Suzanne Barber Regarding Invalidity of U.S.
`Patent No. 6,411,941
`Ancora v. HTC Order Setting Patent Case Schedule
`Samsung and LG Invalidity Contentions and Select Invalidity
`Charts
`Ancora v. Samsung Affidavit of Service
`IAM Article Judge Albright Interview
`VLSI v. Intel Jury Verdict Form
`Ancora v. LG Rebuttal Report of David Martin
`
`
`
`
`
`
`
`3
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`

`

`Ancora’s Opposition to Petitioners’
`Motion for Joinder
`
`Table of Authorities
`
`
`
`IPR2021-00583
`
`Page
`
`Cases
`Aerohive Networks, Inc. v. Chrimar Sys., Inc.,
`IPR2016-01757, paper 3 (PTAB Sep. 8, 2016) ...................................................... 7
`Ancora Techs., Inc. v. Apple, Inc.,
`774 F.3d 732 (Fed. Cir. 2014) ..........................................................................3, 14
`Ancora Techs., Inc. v. HTC Am., Inc.,
`908 F.3d 1343 (Fed. Cir. 2018) ........................................................................4, 19
`Ancora Techs., Inc. v. HTC,
`Case No. 2:16-CV-01919 (W.D.Wa.) .................................................................... 4
`Ancora Techs., Inc. v. Samsung Elecs. Co., Ltd.,
`Case No. 6:19-CV-00385 (W.D.Tex.) .................................................................... 8
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, paper 11 (PTAB Mar. 20, 2020) ...............................................17
`Apple Inc. v. Uniloc 2017 LLC,
`IPR2020-00854, paper 9 (PTAB Oct. 28, 2020) ..................................... 12, 13, 14
`Continental Intermodal Group-Trucking LLC v. Sand Revolution LLC,
`Case No. 7:18-cv-00147, Dkt. 105 (W.D. Tex. July 22, 2020) ............................17
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ..........................................................................................16
`Dell Inc. v. Chrimar Sys., Inc.,
`IPR2016-00569, paper 40 (PTAB Jan. 20, 2017) ................................................... 7
`General Plastic Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, paper 19 (PTAB Sep. 6, 2017) ..................................................11
`HTC Corp. v. Ancora Techs. Inc.,
`CBM2017-00054, paper 1 (PTAB May 26, 2017) ................................................. 4
`HTC Corp. v. Ancora Techs. Inc.,
`CBM2017-00054, paper 7 (PTAB Dec. 1, 2017) ................................................... 4
`Intel Corp. v. VLSI Tech. LLC,
`IPR2020-00583, paper 22 (PTAB Oct. 5, 2020) ..................................................19
`Lenovo (U.S.) Inc. v. Neodron Ltd.,
`IPR2020-00729, paper 9 (PTAB Aug. 3, 2020) ..................................................... 6
`
`4
`
`

`

`Ancora’s Opposition to Petitioners’
`Motion for Joinder
`
`IPR2021-00583
`
`
`LG Elec., Inc. v. Cellular Commc'ns Equip. LLC,
`IPR2016-00711, paper 7 (PTAB May 13, 2016) .................................................... 8
`LG Elecs., Inc. v. Bell Northern Research, LLC,
`IPR2020-00108, paper 14 (PTAB May 20, 2020) .................................................. 6
`Mylan Techs., Inc. v. MonoSol Rx, LLC,
`IPR2017-00200, paper 23 (PTAB Oct. 6, 2017) .................................................... 6
`Par Pharma., Inc. v. MonoSol Rx, LLC,
`IPR2017-01557, paper 4 (PTAB June 9, 2017) ...................................................... 6
`Samsung Elecs. Co. Ltd. v. Immersion Corp.,
`IPR2018-01467, paper 19 (PTAB June 18, 2019) .................................................. 9
`Samsung Elecs. Co., Ltd. v. Ancora Techs. Inc.,
`IPR2020-01184, paper 11 (PTAB Jan. 5, 2021) ............................................ 12, 16
`Valve Corp. v. Elec. Scripting Prods., Inc.,
`IPR2019-00062, paper 11 (PTAB Apr. 2, 2019) ........................................... 12, 13
`ZTE (USA) LLC, v. Seven Networks, LLC,
`IPR 2019-00460, paper 15 (PTAB Feb. 28, 2019) ................................................. 7
`ZTE USA, Inc. v. Parthenon Unified Memory Architecture LLC,
`IPR2016-00664, paper 10 (PTAB June 8, 2016) .................................................... 8
`Statutes
`35 U.S.C. § 314 ........................................................................................................16
`35 U.S.C. § 315(b) ..................................................................................................... 8
`35 U.S.C. § 315(e) ...................................................................................................20
`35 U.S.C. § 317(a) ..................................................................................................... 8
`37 C.F.R. § 42.72 ....................................................................................................... 8
`Other Authorities
`PTAB Consolidated Trial Practice Guide, (Nov. 2019),
`https://www.uspto.gov/TrialPracticeGuideConsolidated .......................... 8, 11, 17
`Regulations
`2011 U.S.C.C.A.N. 67 .............................................................................................17
`H.R. Rep. No. 112–98, pt. 1 (2011) .........................................................................17
`S. Rep. No. 110–259 (2008) ....................................................................................17
`
`5
`
`

`

`Ancora’s Opposition to Petitioners’
`Motion for Joinder
`
`
`I.
`
`INTRODUCTION
`
`IPR2021-00583
`
`Petitioners’ (“Samsung”) motion for joinder (the “Motion”) should not be
`
`granted because the Original Proceeding, IPR2020-01609, that Petitioners seek to
`
`join will likely be terminated before the motion is fully briefed. If terminated, the
`
`Original Proceeding cannot serve as a proceeding to which this proceeding may be
`
`joined, so Petitioners’ motion for joinder will be moot. Further, if the Original
`
`Proceeding is terminated, Petitioners’ petition must be denied because Petitioner was
`
`statutorily barred from petitioning for inter partes review when it filed its petition in
`
`this proceeding.
`
`At minimum, petitioners (TCL) in the Original Proceeding should be
`
`terminated. Without an active petitioner in the Original Proceeding, the resulting
`
`delay will prevent completion of the Original Proceeding within the statutory one-
`
`year period after institution. The undue delay alone is dispositive of Petitioner’s
`
`motion for joinder.
`
`Alternatively, the Board should exercise its discretion to deny institution of
`
`Petitioners’ petition. Petitioners’ motion for joinder should be denied for this
`
`additional reason. The Board ordered patent owner to brief the relevant discretionary
`
`denial factors in this opposition, granting a 7-page extension. Paper 7 at 4.
`
`Under the Board’s precedential General Plastic factors, Samsung’s petition
`
`constitutes an improper serial attack on the ’941 patent. Petitioners have long been
`
`1
`
`

`

`Ancora’s Opposition to Petitioners’
`Motion for Joinder
`
`IPR2021-00583
`
`
`aware of the references asserted in its petition but chose not to assert grounds based
`
`on these references in their timely petition in IPR2020-01184. The Board denied that
`
`petition, recognizing that upcoming trials in the Western District of Texas would
`
`make instituting trial an inefficient use of the Board’s resources. The ’941 patent has
`
`also been subject of petitions filed by multiple other accused infringers of the ’941
`
`patent. Moreover, Petitioners moved for joinder after Patent Owner and original
`
`petitioner TCL had settled their dispute.
`
`The petition should alternatively be discretionarily denied under the Board’s
`
`precedential Fintiv factors. The grounds asserted in Samsung’s petition will be
`
`subject to trial in district court proceedings long before a final decision can issue in
`
`this proceeding or the original proceeding. Ancora and Samsung have trial set to
`
`begin in April 2021 in the Western District of Texas, which will include grounds of
`
`invalidity asserted by Samsung. The ground asserted by Samsung in this matter also
`
`is asserted by LG Electronics Inc. (“LG”) in a co-pending case that will go to trial
`
`on June 7, 2021. These district court trial proceedings will conclude long before a
`
`final decision issues here or in the Original Proceeding.
`
`II. BACKGROUND
`
`The ’941 patent has already withstood serial challenges before the Board and
`
`in the federal courts. Since 2008 the ’941 patent has been asserted in district court
`
`proceedings against accused infringers Microsoft Corporation, Toshiba America
`
`2
`
`

`

`Ancora’s Opposition to Petitioners’
`Motion for Joinder
`
`IPR2021-00583
`
`
`Information Systems Inc., Hewlett Packard Inc., Dell Inc., Apple Inc., LG
`
`Electronics Inc., HTC America, Inc., TCT Mobile (US) Inc., Lenovo Group Ltd.,
`
`Samsung Electronics Co., Ltd., and Sony Mobile Communications AB. Responding
`
`to these accused infringers’ validity challenges, Patent Owner Ancora has
`
`successfully defended the ’941 patent in multiple forums. Relevant aspects of the
`
`’941 patent’s litigation history are described below.
`
`In 2009, at the USPTO Ancora defended the validity of the ’941 patent in ex
`
`parte Reexamination No. 90/010,560 over art asserted by Microsoft. The Examiner
`
`found claims 1–19 patentable without amendment. (Ex. 1001 at 9 (ex parte
`
`reexamination certificate).) Apple asserted several challenges to the ’941 patent’s
`
`validity. After the district court upheld the ’941 patent’s validity, the Federal Circuit
`
`affirmed that the claim terms “volatile memory” and “non-volatile memory” are not
`
`indefinite. Ancora Techs., Inc. v. Apple, Inc., 774 F.3d 732, 737 (Fed. Cir. 2014). At
`
`the district court, Apple publicly filed invalidity contentions on August 25, 2015 that
`
`identified asserted references and partial invalidity claim charts. (Ex. 2004 at 2, 3,
`
`31.) Apple’s asserted references included U.S. Patent Nos. 4,658,093 to Hellman
`
`and 5,892,906 to Chou, upon which Samsung’s joinder petition relies.
`
`Ancora sued HTC for infringement of the ’941 patent on December 15, 2016
`
`and served the complaint on HTC on December 27, 2016. HTC first challenged the
`
`’941 patent by moving to dismiss for alleged failure to claim patent eligible subject
`
`3
`
`

`

`Ancora’s Opposition to Petitioners’
`Motion for Joinder
`
`IPR2021-00583
`
`
`matter. Shortly after, HTC mounted its second challenge by filing a petition for CBM
`
`review. HTC Corp. v. Ancora Techs. Inc., Case No. CBM2017-00054, paper 1
`
`(PTAB May 26, 2017). HTC’s CBM petition asserted the ’941 patent was invalid
`
`under § 101 for lack of patentable subject matter, under § 112 for indefiniteness and
`
`lack of written description, and under § 103 for obviousness over European Patent
`
`Application Publication No. EP0766165 to Hasebe, in view of Desktop Management
`
`BIOS Specification Version 2.0 (Mar. 6, 1996). HTC, paper 1 at 24–25. HTC’s CBM
`
`petition notably did not assert the Hellman or Chou references disclosed by Apple.
`
`Id. The Board denied institution of HTC’s petition. HTC, paper 7.
`
`In the co-pending lawsuit, the court granted HTC’s motion to dismiss, but the
`
`Federal Circuit ultimately reversed on appeal. Ancora Techs., Inc. v. HTC Am., Inc.,
`
`908 F.3d 1343 (Fed. Cir. 2018) (holding the claims are not invalid under § 101).
`
`After remand from the Federal Circuit, the parties proceeded with discovery and
`
`claim construction briefing. Ancora Techs., Inc. v. HTC, Case No. 2:16-CV-01919
`
`(W.D.Wa.). After substantial delay, the district court held a Markman hearing on
`
`March 5, 2021. At that hearing the district court announced it will issue a claim
`
`construction order in May 2021 (transcript not yet available). The court will then set
`
`a trial date at least 180 days after the court enters the claim construction order. (Ex.
`
`2010.)
`
`4
`
`

`

`Ancora’s Opposition to Petitioners’
`Motion for Joinder
`
`IPR2021-00583
`
`Ancora sued several TCL entities for infringement of the ’941 patent on
`
`
`
`August 27, 2019 and served the complaint on TCL on September 16, 2019. TCL
`
`filed an IPR petition on September 10, 2020, in IPR2020-01609, referenced herein
`
`as the “Original Proceeding.” Ancora and TCL discussed settlement and had nearly
`
`come to terms as of February 5, 2021. Before the parties finalized terms, the Board
`
`instituted trial in the Original Proceeding on February 16, 2021. Ancora and TCL
`
`came to terms settling all litigation and e-mailed the Board on February 19, 2021
`
`requesting permission to file a motion to terminate the Original Proceeding. (Ex.
`
`2007.) Samsung filed its joinder petition in this proceeding four days later, on
`
`February 23, 2021.
`
`Ancora sued LG and Samsung for infringement of the ’941 patent on June 21,
`
`2019, in two separate cases. Progress in both cases has been swift. On February 3,
`
`2020, LG and Samsung listed Hellman and Chou in their invalidity contentions. (Ex.
`
`2011 at 45–75, 116, 134–140.) Trial between Ancora and Samsung in the Western
`
`District of Texas is set for April 2021. (Ex. 2008.) LG’s expert witness asserted
`
`grounds of invalidity in the district court that include the same ground asserted by
`
`Samsung in this proceeding. (Ex. 2009 at 251–267.) Trial between Ancora and LG
`
`is set to begin June 7, 2021. (Ex. 2008.)
`
`5
`
`

`

`Ancora’s Opposition to Petitioners’
`Motion for Joinder
`
`IPR2021-00583
`
`
`III. PETITIONER’S MOTION FOR JOINDER SHOULD BE DENIED
`FOR MOOTNESS OR BECAUSE IT WILL UNDULY DELAY THE
`ORIGINAL PROCEEDING
`
`A. The Board Should Terminate the Original Proceeding, Which
`Would Moot This Motion
`Patent Owner Ancora has settled with the petitioner, TCL, in the Original
`
`Proceeding, and the Board authorized the parties to file a corresponding motion to
`
`terminate the Original Proceeding. If terminated, the Original Proceeding cannot
`
`serve as a proceeding to which this proceeding may be joined. See, e.g., LG Elecs.,
`
`Inc. v. Bell Northern Research, LLC, Case No. IPR2020-00108, paper 14 (PTAB
`
`May 20, 2020) (denying motion for joinder after original proceeding was
`
`terminated); Lenovo (U.S.) Inc. v. Neodron Ltd., Case No. IPR2020-00729, paper 9
`
`(PTAB Aug. 3, 2020) (denying motion for joinder because the original proceeding
`
`had not been instituted). Consequently, Petitioners’ motion for joinder may be moot.
`
`Complete
`
`termination of
`
`the Original Proceeding
`
`is appropriate,
`
`notwithstanding a pending motion for joinder by a time-barred petitioner. For
`
`example, in Mylan Techs., Inc. v. MonoSol Rx, LLC, IPR2017-00200, paper 23
`
`(PTAB Oct. 6, 2017), the Board fully terminated the proceeding despite the pending
`
`joinder request by the time-barred petitioner in Par Pharma., Inc. v. MonoSol Rx,
`
`LLC, IPR2017-01557, paper 4 (PTAB June 9, 2017). The Board denied Par’s request
`
`to have their petition and motion for joinder decided before the Board decided
`
`whether to terminate. Mylan, paper 22 at 2. In Dell Inc. v. Chrimar Sys., Inc.,
`
`6
`
`

`

`Ancora’s Opposition to Petitioners’
`Motion for Joinder
`
`IPR2021-00583
`
`
`IPR2016-00569, paper 40 (PTAB Jan. 20, 2017), the Board also fully terminated
`
`despite the pending joinder request in Aerohive Networks, Inc. v. Chrimar Sys., Inc.,
`
`IPR2016-01757, paper 3 (PTAB Sep. 8, 2016).
`
`If Samsung or the petitioners in IPR2021-00581 and IPR2021-00581, or
`
`IPR2021-00663 believed that the grounds asserted in the Original Proceeding had
`
`merit, they should have pursued them before the one-year time bar expired. The cited
`
`Hellman, Chou, and Schenck references were publicly available for each of the
`
`joinder petitioners. Reasonable searching would have identified these references
`
`within bar dates for these petitioners, as evidenced by Apple’s reliance on Hellman
`
`and Chou in its 2015 invalidity contentions. Further, Apple filed its invalidity
`
`contentions including Hellman and Chou publicly on August 25, 2015. (Ex. 2004 at
`
`2, 3, 31.)
`
`Complete termination furthers the “strong policy reasons to favor settlement,”
`
`notwithstanding time-barred petitions such as the one filed here by Samsung. See
`
`ZTE (USA) LLC, v. Seven Networks, LLC, Case No. IPR 2019-00460, paper 15
`
`(PTAB Feb. 28, 2019) (denying ZTE’s request for rehearing of the order terminating
`
`the proceedings it sought to join). Ancora and TCL settled ongoing litigation to avoid
`
`unnecessary litigation costs. Only after that occurred did Samsung file its petition
`
`and motion for joinder. As discussed further below, Samsung’s late-filed me-too
`
`petition is demonstrably subject to discretionary denial under the Board’s precedent.
`
`7
`
`

`

`Ancora’s Opposition to Petitioners’
`Motion for Joinder
`
`IPR2021-00583
`
`The Board has discretion to terminate IPR proceedings after the parties file a
`
`
`
`settlement agreement. 35 U.S.C. § 317(a); see also 37 C.F.R. § 42.72. “There are
`
`strong public policy reasons to favor settlement between the parties to a proceeding.”
`
`PTAB Consolidated Trial
`
`Practice Guide,
`
`at
`
`86
`
`(Nov.
`
`2019),
`
`https://www.uspto.gov/TrialPracticeGuideConsolidated. The Board
`
`therefore
`
`terminates proceedings “after the filing of a settlement agreement, unless the Board
`
`already has decided the merits of the proceeding.” Id. Complete termination of the
`
`Original Proceeding is appropriate and consistent with the Board’s discretion to
`
`terminate. See, e.g., ZTE USA, Inc. v. Parthenon Unified Memory Architecture LLC,
`
`Case No. IPR2016-00664, paper 10 at 3 (PTAB June 8, 2016); LG Elec., Inc. v.
`
`Cellular Commc'ns Equip. LLC, Case No. IPR2016-00711, paper 7 at 1−2 (PTAB
`
`May 13, 2016). In each of the ZTE and LG Electronic cases, the Board terminated
`
`immediately—notwithstanding third-party petitions and motions for joinder filed in
`
`related proceedings.
`
`If the Original Proceeding is terminated, Samsung’s petition must be denied
`
`because Samsung was statutorily barred from petitioning for inter partes review
`
`when it filed its petition in this proceeding. 35 U.S.C. § 315(b). Ancora filed a
`
`complaint on June 21, 2019 against Samsung for infringement of the ’941 patent.
`
`Ancora Techs., Inc. v. Samsung Elecs. Co., Ltd., Case No. 6:19-CV-00385
`
`(W.D.Tex.). Ancora served the complaint on HTC on June 25, 2019. (Ex. 2012.)
`
`8
`
`

`

`Ancora’s Opposition to Petitioners’
`Motion for Joinder
`
`IPR2021-00583
`
`
`This was more than a year before Samsung filed its February 23, 2021 petition in
`
`this proceeding.
`
`Because complete termination of the Original Proceeding is appropriate,
`
`Petitioner’s motion would become moot and should therefore be denied.
`
`B. Undue Delay in the Original Proceedings Alternatively Requires
`Denying Petitioners’ Motion for Joinder
`Waiting for the Board to decide whether to institute this proceeding will cause
`
`extensive delay in the Original Proceeding. Patent Owner should not bear the burden
`
`of mitigating this delay, given that Petitioners chose not to assert these grounds until
`
`long past their one-year bar date and long after they were aware of the asserted art.
`
`If the Board chooses not to completely terminate the Original Proceeding,
`
`discovery cannot proceed in the original until a new petitioner stands in for TCL. In
`
`situations where the original parties request termination of a proceeding after new
`
`petitioners file motions for joinder, the Board sometimes terminates only the
`
`petitioner and vacates the scheduling order in the original proceeding because “no
`
`petitioner remains.” See, e.g., Samsung Elecs. Co. Ltd. v. Immersion Corp.,
`
`IPR2018-01467, paper 19 (PTAB June 18, 2019). This effectively stays the original
`
`proceeding, giving the Board time to decide whether to institute and join a
`
`subsequent, identical petition. Id. A short delay may be acceptable in proceedings
`
`where the motion for joinder is filed long before the motion to terminate.
`
`9
`
`

`

`Ancora’s Opposition to Petitioners’
`Motion for Joinder
`
`IPR2021-00583
`
`But the Original Proceeding here will suffer an unduly long delay if the Board
`
`
`
`chooses to terminate the original petitioner TCL but maintain the Original
`
`Proceeding. Patent owner discovery has just begun and is already stalled in view of
`
`the settlement between TCL and Ancora. TCL agreed, in its settlement agreement
`
`with Ancora, not to pursue or assist others in pursuing its IPR. The Original
`
`Proceeding will remain at a standstill until the Board decides whether to institute this
`
`proceeding or the related joinder proceedings: IPR2021-00581, IPR2021-00583, and
`
`IPR2021-00663.
`
`Without an active petitioner in the Original Proceeding, the resulting delay
`
`will prevent completion of the Original Proceeding within the statutory one-year
`
`period after institution. Patent Owner’s preliminary response in this proceeding is
`
`due on April 23, 2021. See Paper 7 (Order on Conduct of the Proceeding). After
`
`receiving the patent owner preliminary response, the Board often takes up to three
`
`months to issue a decision on institution. The resulting delay in the Original
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`Proceeding could therefore range from at least two months minimum to nearly five.
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`This would prevent the Board from concluding this proceeding within one year of
`
`institution.
`
`Patent Owner has a unique need for a preliminary response in this proceeding
`
`and the related joinder proceedings. In the Original Proceeding, Patent Owner
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`responded with a simple argument based on claim constructions issued in related
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`10
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`

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`Ancora’s Opposition to Petitioners’
`Motion for Joinder
`
`IPR2021-00583
`
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`district court proceedings. Patent Owner did not file an expert declaration. In this
`
`proceeding, Patent Owner intends to offer a fulsome preliminary response showing
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`the lack of merit in the asserted ground. Patent Owner has already served expert
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`disclosures responding to LG’s identical district court contentions (Ex. 2015 at 86–
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`96) and expects similar arguments will be relevant in this proceeding.
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`If Samsung or the joinder petitioners wanted review of the grounds asserted
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`in TCL’s petition, they could have filed timely petitions when they had the
`
`opportunity. They did not. The timing problems here were caused by Petitioner
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`Samsung’s own delay.
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`IV. THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`THIS PETITION
`
`A. The General Plastic Factors Favor Discretionary Denial of
`Samsung’s Joinder Petition
`Binding precedent favors exercising the Board’s discretion to deny Samsung’s
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`petition in this proceeding. The Board uses the seven General Plastic factors
`
`discussed below to evaluate “the potential impacts on both the efficiency of the inter
`
`partes review process and the fundamental fairness of the process for all parties.”
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`General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, paper 19 at
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`16–17 (PTAB Sep. 6, 2017) (precedential); see also PTAB Consolidated Trial
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`Practice Guide, at 56–57. When different petitioners challenge the same patent, the
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`Board considers the relationship, if any, between those petitioners when weighing
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`11
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`

`

`Ancora’s Opposition to Petitioners’
`Motion for Joinder
`
`IPR2021-00583
`
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`the General Plastic factors. Valve Corp. v. Elec. Scripting Prods., Inc., Case No.
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`IPR2019-00062, paper 11 (PTAB Apr. 2, 2019) (precedential) (denying institution
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`of a follow-on petition filed by a co-defendant).
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`Motions for joinder are not a second opportunity for review at the PTAB,
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`where the joinder petitioner has previously filed its own petition. Apple Inc. v. Uniloc
`
`2017 LLC, IPR2020-00854, paper 9 at 4 (PTAB Oct. 28, 2020) (precedential). In
`
`Uniloc 2017, the Board denied joinder even though the petitioner would serve as an
`
`“understudy” in the existing proceeding. The Board reasoned that “the copied
`
`petition is Petitioner’s second challenge to the patent, and should [original petitioner]
`
`settle, Petitioner would stand in to continue a proceeding that would otherwise be
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`terminated.” Id. The same reasoning applies to Samsung and the petitioners in the
`
`related joinder proceedings.
`
`1.
`
`Factor 1: Whether the Same Petitioner Previously Filed a
`Petition Directed to the Same Claims of the Same Patent, and
`
`Factor 3: Whether at the Time of Filing of the Second
`Petition the Petitioner Already Received the Patent Owner’s
`Preliminary Response to the First Petition or Received the
`Board’s Decision on Whether to Institute Review in the First
`Petition
`
`Samsung already challenged the ’941 patent at the PTAB, in IPR2020-01184.
`
`The Board denied institution of Samsung’s petition. Samsung Elecs. Co., Ltd. v.
`
`Ancora Techs. Inc., IPR2020-01184, paper 11 (PTAB Jan. 5, 2021). Ancora filed a
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`12
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`

`

`Ancora’s Opposition to Petitioners’
`Motion for Joinder
`
`IPR2021-00583
`
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`complete preliminary response in that matter, addressing the merits. Samsung has
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`also benefitted from petitions and corresponding responses filed in other
`
`proceedings, including CBM2016-00023, filed by Apple, and CBM2017-00054,
`
`filed by HTC.
`
`Similarly situated petitioners have challenged the ’941 patent at the PTAB
`
`and in other forums. When different petitioners challenge the same patent, the Board
`
`considers any relationship between those petitioners when weighing the General
`
`Plastic factors. Valve, Case No. IPR2019-00062, paper 11 at 9. Prior petitioners at
`
`the PTAB have included Apple, in CBM2016-00023, and HTC, in CBM2017-
`
`00054. In addition, Microsoft unsuccessfully requested ex parte reexamination of
`
`the ’941 patent in Reexamination No. 90/010,560. These accused infringers sell
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`similar, competing products and are consequently motivated to pursue similar
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`approaches to invalidating the ’941 patent—as evidenced by the flurry of me-too
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`petitions filed after institution of IPR2021-01609. Both factors 1 and 3 weigh against
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`institution.
`
`2.
`
`Factor 2: Whether at the Time of Filing of the First Petition
`the Petitioner Knew of the Prior Art Asserted in the Second
`Petition or Should Have Known of It
`
`Samsung knew or should have known long ago about the art it now asserts.
`
`Samsung has not argued that it was unaware of the art it now asserts in its petition.
`
`The relevant facts are indistinguishable from Apple’s circumstances in Uniloc 2017.
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`13
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`

`

`Ancora’s Opposition to Petitioners’
`Motion for Joinder
`
`IPR2021-00583
`
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`See Uniloc 2017, paper 9 at 5. There, despite filing an earlier petition for inter partes
`
`review, Apple failed to explain how and when it came to know about the prior art
`
`asserted in its joinder petition. Id. at 9. As discussed above, public record from
`
`Ancora v. Apple makes clear that the Hellman and Chou references were available
`
`and known to accused infringers of the ’941 patent at least by August 25, 2015. (See
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`Ex. 2004 at 2, 3, 31.) This factor weighs against institution.
`
`3.
`
`Factor 4: The Length of Time That Elapsed Between the
`Time the Petitioner Learned of the Prior Art Asserted in the
`Second Petition and the Filing of the Second Petition
`
`Samsung has not identified the date when it learned of the art asserted in its
`
`petition. But Samsung had ample time to identify art, long before filing its joinder
`
`petition. As discussed above, Samsung was first served with a complaint alleging
`
`infringement of the ’941 patent on June 25, 2019—more than 19 months before
`
`filing this petition. (Ex. 2012.) Moreover, Hellman and Chou were available and
`
`known to accused infringers of the ’941 patent as early as August 2015. (See Ex.
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`2004.) This factor weighs against institution.
`
`4.
`
`Factor 5: Whether the Petitioner Provides Adequate
`Explanation for the Time Elapsed Between the Filings of
`Multiple Petitions Directed to the Same Claims of the Same
`Patent
`
`Sams