Trials@uspto.gov
`571-272-7822
`
`Paper No. 12
`Date Entered: February 24, 2015
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD,
`Petitioner,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01493
`Patent 5,652,084
`____________
`
`
`
`Before, JACQUELINE WRIGHT BONILLA, JO-ANNE M. KOKOSKI, and
`KRISTINA M. KALAN Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F R § 42.122(b)
`
`
`571-272-7822
`
`Paper No. 12
`Date Entered: February 24, 2015
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD,
`Petitioner,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01493
`Patent 5,652,084
`____________
`
`
`
`Before, JACQUELINE WRIGHT BONILLA, JO-ANNE M. KOKOSKI, and
`KRISTINA M. KALAN Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F R § 42.122(b)
`
`
`
`IPR2014-01493
`Patent 5,652,084
`
`
`Introduction
`Samsung Electronics Co., Inc. (“Samsung”) filed a Petition (“Petition”) for
`inter partes review of U.S. Patent No. 5,652,084 (Ex. 1001, “the ’084 Patent”),
`which Petition was accorded a filing date of September 12, 2014. Paper 1, Paper 4,
`see also Paper 7 (Corrected Petition for Inter Partes Review filed October 3, 2014).
`On January 29, 2015, Samsung filed a Motion for Joinder (“Mot.”) to join
`this proceeding with Taiwan Semiconductor Mfg. Co., Ltd. v. DSS Tech. Mgmt.,
`Inc., Case IPR2014-01030. Paper 10. IPR2014-01030 concerns the same patent at
`issue here, namely, the ’084 Patent. We instituted trial in IPR2014-01030 on
`December 31, 2014. We have not yet instituted trial in IPR2014-01493.
`Samsung indicates that Taiwan Semiconductor Manufacturing Company,
`Ltd. (“TSMC”) and DSS Technology Management, Inc. (“Patent Owner”) agree to
`have the two proceedings joined. Mot. 1. For the reasons below, we (1) institute
`an inter partes review on certain grounds asserted in the Petition, and (2) grant
`Samsung’s Motion for Joinder, subject to the conditions detailed herein.
`Institution of Inter Partes Review
`The Petition in IPR2014-01493 asserts the same grounds as those asserted in
`
`IPR2014-01030, and adds additional grounds based on U.S. Patent No. 5,667,940
`(“Hsue”). Petition 26–60. In IPR2014-01030, we instituted trial on the following
`grounds: (1) claims 1–8, 12, 15, and 16 as anticipated by Japanese Patent Appl.
`No. H04-71222 (“Jinbo”); (2) claim 9 as obvious over Jinbo and U.S. Patent No.
`4,931,351 (“McColgin”); and (3) claims 10 and 11 as obvious over Jinbo and U.S.
`Patent No. 4,548,688 (“Matthews”). Case IPR2014-01030, Paper 7 (PTAB
`December 31, 2014) at 19.
`
`Samsung agrees to limit its Petition to the same grounds on which we
`instituted trial in IPR2014-01030; to withdraw its challenges to claims 13 and 14;
`
`
`
`2
`
`
`
`IPR2014-01493
`Patent 5,652,084
`
`and to withdraw its challenges of claims 1–8, 12, 15, and 16 based on grounds
`other than those instituted in IPR2014-01030, i.e. grounds based on Hsue. Mot. 5–
`6. With respect to the grounds on which trial was instituted in IPR2014-01030,
`Patent Owner’s Preliminary Response in IPR2014-01493 (Paper 9) did not raise
`substantial additional arguments or present substantially different evidence than
`what we considered in the course of instituting trial on IPR2014-1030. In other
`words, institution of trial in IPR2014-01493 is based upon consideration of the
`same issues, arguments, and oppositions raised with respect to the IPR2014-01030.
`
`In view of the similarity of the challenges in the Petition and the arguments
`in the Preliminary Response, and in view of Samsung’s agreement to limit its
`Petition to the same grounds on which we instituted trial in IPR2014-01030, we
`institute an inter partes review in this proceeding on the same grounds as those on
`which we instituted trial in IPR2014-01030. We do not institute an inter partes
`review on any other grounds.
`Joinder of Inter Partes Reviews
`An inter partes review may be joined with another inter partes review,
`subject to the provisions 35 U.S.C. § 315(c), which governs joinder of inter partes
`review proceedings:
`(c) JOINDER. -- 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 parties review under
`section 314.
`
`As the moving party, Samsung bears the burden of proving that it is entitled
`to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should: (1) set
`forth the reasons joinder is appropriate; (2) identify any new grounds of
`
`
`
`3
`
`
`
`IPR2014-01493
`Patent 5,652,084
`
`unpatentability asserted in the petition; and (3) explain what impact (if any) joinder
`would have on the trial schedule for the existing review. See Frequently Asked
`Question H5, http://www.uspto.gov/patents-application-process/appealing-patent-
`decisions/trials/patent-review-processing-system-prps-0.
`Samsung requested authorization to file a motion for joinder on January 28,
`2015, and, as authorized, filed its Motion on January 29, 2015. Papers 10 and 11.
`Both of those actions were taken within one month of the IPR2014-01030 trial
`institution date of December 31, 2014, as required by 37 C.F.R. § 42.122(b).
`As noted above, in its Motion, Samsung agrees to limit its Petition to
`grounds upon which we instituted trial in IPR2014-01030. Mot. 5. Samsung
`agrees to consolidated filings and discovery with TSMC, wherein TSMC will
`submit the filings, and agrees to rely on the same expert as TSMC, Dr. Richard
`Blanchard. Id. at 6–7. Samsung agrees that any cross-examination of witnesses
`produced by Patent Owner will be conducted within the timeframe normally
`allotted by the rules for one party. Id. at 7. Samsung requests that, in the event of
`joinder, we proceed as outlined in the Scheduling Order in IPR2014-01030. Id. at
`7–8. Samsung summarizes that joinder will provide reliability during the review
`process, and that Patent Owner will not be prejudiced by joining IPR2014-01493 to
`IPR2014-01030. Id. at 8–9.
`We agree with Samsung that joinder would be appropriate under the
`circumstances. Based on the record before us, we institute an inter partes review
`in IPR2014-01493 and grant Samsung’s motion to join IPR2014-01493 to
`IPR2014-01030.
`
`Order
`
`Accordingly, it is
`ORDERED that trial is instituted in IPR2014-01493 as to claims 1–12, 15,
`
`
`
`4
`
`
`
`IPR2014-01493
`Patent 5,652,084
`
`and 16 of the ’084 patent on the following grounds only:
`1. Whether claims 1–8, 12, 15, and 16 are unpatentable under 35 U.S.C.
`§ 102(b) as anticipated by Jinbo;
`2. Whether claim 9 is unpatentable under 35 U.S.C. § 103(a) as obvious
`over Jinbo and McColgin; and
`3. Whether claims 10 and 11 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over Jinbo and Matthews;
`FURTHER ORDERED that the Samsung’s Motion for Joinder is granted
`and that this proceeding is joined with IPR2014-01030;
`FURTHER ORDERED that IPR2014-01493 is terminated under 37 C.F.R.
`§ 42.72 and all further filings in the joined proceeding are to be made in IPR2014-
`01030;
`FURTHER ORDERED that the Scheduling Order in IPR2014-01030
`remains unchanged and applies to the joined proceeding;
`FURTHER ORDERED that TSMC will file all papers in the joined
`proceeding jointly on behalf of TSMC and Samsung, except in the case of motions
`that do not involve the other party;
`FURTHER ORDERED that the case caption in IPR2014-01030 shall be
`changed to reflect joinder with this proceeding in accordance with the attached
`example; and
`FURTHER ORDERED that a copy of this Decision be entered into the file
`of IPR2014-01030.
`
`
`
`
`
`
`5
`
`
`
`IPR2014-01493
`Patent 5,652,084
`
`PETITIONER:
`
`
`Christopher Marando
`Brian Ferguson
`WEIL, GOTSHAL & MANGES LLP
`Christopher.marando@weil.com
`Brian.ferguson@weil.com
`
`
`6
`
`
`PATENT OWNER:
`
`
`Andriy Lytvyn
`Anton Hopen
`SMITH & HOPEN, P.A.
`andriy.lytvyn@smithhopen.com
`anton.hopen@smithhopen.com
`
`
`
`
`
`
`
`
`IPR2014-01493
`Patent 5,652,084
`
`
`Example Case Caption
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`(TSMC) and SAMSUNG ELECTRONICS CO., LTD,
`Petitioner,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-010301
`Patent 5,652,084
`
`
`
`
`1 Case IPR2014-01493 has been joined with this proceeding.
`7
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