Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 10
`Entered: June 8, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`ZTE USA, INC., HTC CORPORATION, HTC AMERICA, INC., LG
`ELECTRONCIS, INC., and APPLE INC.,1
`Petitioners,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00664 (Patent 5,812,789) Case IPR2016-00848 (Patent 5,960,464)
`Case IPR2016-00665 (Patent 5,960,464) Case IPR2016-00923 (Patent 5,812,789)
`Case IPR2016-00847 (Patent 5,812,789) Case IPR2016-00924 (Patent 5,960,464)2
`____________
`
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 ZTE USA, Inc., is the Petitioner in Cases IPR2016-00664 and IPR2016-00665;
`HTC Corporation, HTC America, Inc., and LG Electronics, Inc. are the Petitioners
`in Cases IPR2016-00847 and IPR2016-00848; and Apple Inc. is the Petitioner in
`Cases IPR2016-00923 and IPR2016-00924.
`2 We exercise our discretion to issue one Order to be filed in each case. The
`parties, however, are not authorized to use this style heading in any subsequent
`papers.
`
`
`

`
`IPR2016-00664 (Patent 5,812,789)
`IPR2016-00665 (Patent 5,960,464)
`IPR2016-00847 (Patent 5,812,789)
`
`
`IPR2016-00848 (Patent 5,960,464)
`IPR2016-00923 (Patent 5,812,789)
`IPR2016-00924 (Patent 5,960,464)
`
`A conference call in the six proceedings identified above was held on June
`7, 2016, between the parties and Judges Zecher, Arpin, and Clements. HTC
`Corporation, HTC America, Inc. and LG Electronics, Inc. (“Petitioner”) initiated
`the conference call to request authorization to file new motions for joinder in
`IPR2016-00847 (“the 847 IPR”) and IPR2016-00848 (“the 848 IPR”) requesting
`joinder to ZTE USA, Inc.’s (“ZTE’s”) pending Petitions (IPR2016-00664 and
`IPR2016-00665) or, alternatively, Apple Inc.’s (“Apple’s”) pending Petitions
`(IPR2016-00923 and IPR2016-00924).
`
`
`I. BACKGROUND
`On September 22, 2015, Samsung Electronics Co., Ltd. and Samsung
`Electronics America, Inc. (collectively “Samsung”) filed Petitions in IPR2015-
`01944 (“the 1944 IPR”) and IPR2015-01946 (“the 1946 IPR”) challenging U.S.
`Patent No. 5,812,789 (“the ’789 patent”) and U.S. Patent No. 5,960,464 (“the ’464
`patent”), respectively. Samsung Elecs. Co. v. Parthenon Unified Memory
`Architecture LLC, Case IPR2015-01944, Paper 2; Samsung Elecs. Co. v.
`Parthenon Unified Memory Architecture LLC, Case IPR2015-01946, Paper 2.
`On February 26, 2016, ZTE filed Petitions in IPR2016-00664 (“the 664
`IPR”) and IPR2016-00665 (“the 665 IPR”) that are substantively identical to the
`Petitions filed by Samsung in the 1944 IPR and in the 1946 IPR, respectively. ZTE
`USA, Inc. v. Parthenon Unified Memory Architecture LLC, Case IPR2016-00664,
`Paper 2; ZTE USA, Inc. v. Parthenon Unified Memory Architecture LLC, Case
`IPR2016-00665, Paper 2. The Petitions in the 664 IPR and the 665 IPR were
`accompanied by Motions for Joinder seeking to join the 1944 IPR and the 1946
`IPR, respectively. 664 IPR, Paper 3; 665 IPR, Paper 3.
`
`2
`
`

`
`IPR2016-00664 (Patent 5,812,789)
`IPR2016-00665 (Patent 5,960,464)
`IPR2016-00847 (Patent 5,812,789)
`
`
`IPR2016-00848 (Patent 5,960,464)
`IPR2016-00923 (Patent 5,812,789)
`IPR2016-00924 (Patent 5,960,464)
`
`On March 30, 2016, we instituted inter partes reviews of the 1944 IPR and
`of the 1946 IPR. 1944 IPR, Paper 7; 1946 IPR, Paper 7.
`On April 7, 2016, within one month of our Decisions to Institute the 1944
`IPR and in the 1946 IPR, Petitioner filed Petitions in the 847 IPR and 848 IPR
`accompanied by Motions for Joinder seeking to join the 1944 IPR and the 1946
`IPR, respectively. 847 IPR, Paper 1 (“847 Pet.”); 848 IPR, Paper 1 (“848 Pet.”).
`On April 20, 2016, within one month of our Decisions to Institute the 1944
`IPR and in the 1946 IPR, Apple filed Petitions in the Case IPR2016-00923 (“the
`923 IPR”) and Case IPR2016-00924 (“the 924 IPR”) accompanied by Motions for
`Joinder seeking to join the 1944 IPR and the 1946 IPR, respectively.
`On May 25, 2016, we granted Joint Motions to Terminate in the 1944 IPR
`and the 1946 IPR. 1944 IPR, Paper 12; 1946 IPR, Paper 12.
`
`
`II. DISCUSSION
`
`A. Petitioner’s Motions for Joinder
`Petitioner was served with a complaint alleging infringement of the ’789
`patent and the ’464 patent more than one year before it filed the Petitions in the
`847 IPR and 848 IPRs. 847 Pet. 4; 848 Pet. 4. As a result, those Petitions are
`untimely under 35 U.S.C. § 315(b) unless accompanied by Motions for Joinder
`under § 315(c), such as the ones Petitioner filed seeking to join the 1944 IPR and
`1946 IPR, respectively. Now that the 1944 IPR and the 1946 IPR are terminated,
`however, Petitioner’s Motions for Joinder in the 847 IPR and 848 IPR are moot.
`As a result, the Petitions in the 847 IPR and the 848 IPR would be untimely and,
`absent other circumstances, would be denied.
`
`3
`
`

`
`IPR2016-00664 (Patent 5,812,789)
`IPR2016-00665 (Patent 5,960,464)
`IPR2016-00847 (Patent 5,812,789)
`
`
`IPR2016-00848 (Patent 5,960,464)
`IPR2016-00923 (Patent 5,812,789)
`IPR2016-00924 (Patent 5,960,464)
`
`In this case, however, the parties acknowledged during the conference call
`that two Petitions are substantively identical to the 847 Petition that are pending
`before us in the 664 IPR (filed by ZTE) and in the 923 IPR (filed by Apple), and
`two petitions are substantively identical to the 848 Petition that are pending before
`us in the 665 IPR (filed by ZTE) and in the 924 IPR (filed by Apple). Although
`ZTE filed a motion seeking joinder of the 664 IPR and 665 IPR with the 1944 IPR
`and the 1946 IPR, respectively, ZTE’s Petitions are not barred under § 315(b) in
`the absence of joinder. Similarly, although Apple filed a motion seeking joinder of
`the 923 IPR and 924 IPR with the 1944 IPR and 1946 IPR, respectively, Apple’s
`Petitions are not barred under § 315(b) in the absence of joinder. As a result, the
`timeliness of the 664 IPR, 665 IPR, 923 IPR, and 924 IPR is unaffected by our
`termination of the 1944 IPR and 1946 IPR. Thus, even if we deny institution of
`the 847 IPR and 848 IPR for lack of an instituted case to which they may be
`joined, we still must address the merits of the 664 IPR, 665 IPR, 923 IPR, and 924
`IPR. And, in the event that we institute inter partes reviews in those cases,3
`Petitioner could simply re-file, as new proceedings, the papers presently before us
`in the 847 IPR and 848 IPR, and seek joinder to the newly-instituted proceedings,
`rather than to the 1944 IPR and 1946 IPR.
`In the interest of a just, speedy, and inexpensive resolution to any
`proceedings in the 847 IPR and 848 IPR and efficient consideration of the merits
`of nearly identical papers in a later proceeding, we dismiss without prejudice the
`Motions for Joinder currently pending in the 847 IPR and in the 848 IPR, and
`
`
`3 We previously instituted substantively identical petitions in the 1944 IPR and
`1946 IPRs, and Patent Owner waived its Preliminary Response in the pending
`proceedings (664 IPR, Paper 9; 665 IPR, Paper 9; 923 IPR, Paper 8; 924 IPR,
`Paper 8).
`
`4
`
`

`
`IPR2016-00848 (Patent 5,960,464)
`IPR2016-00923 (Patent 5,812,789)
`IPR2016-00924 (Patent 5,960,464)
`
`IPR2016-00664 (Patent 5,812,789)
`IPR2016-00665 (Patent 5,960,464)
`IPR2016-00847 (Patent 5,812,789)
`
`authorize Petitioner to file, on or before June 15, 2016, renewed Motions for
`Joinder seeking joinder with the Petitions filed by ZTE in the 664 IPR and 665
`IPR, respectively, or, alternatively, with the Petitions filed by Apple in the 923 IPR
`and 924 IPR, respectively.
`
`B. Apple & ZTE’s Motions for Joinder
`Both Apple and ZTE filed Motions for Joinder of their Petitions with the
`1944 IPR and the 1946 IPR, respectively. 664 IPR, Paper 3; 665 IPR, Paper 3; 923
`IPR, Paper 3; 924 IPR, Paper 3. Like Petitioner’s Motions for Joinder in the 847
`IPR and 848 IPR, Apple’s and ZTE’s Motions for Joinder are now moot in view of
`the termination of the 1944 IPR and 1946 IPR. Those Motions are, therefore,
`dismissed without prejudice.
`Although neither Apple’s nor ZTE’s Petitions are barred under § 315(b) in
`the absence of joinder, the panel expressed its desire to join the 664 IPR and 923
`IPR and to join the 665 IPR and 924 IPR, so that two pairs of substantively
`identical proceedings do not move forward in parallel. The parties asked for time
`to discuss with each other which pair of cases—the 664 IPR and 665 IPR or the
`923 IPR and 924 IPR—would be the cases to which the other cases would be
`joined. The panel finds it intuitive to address the earliest-filed cases—the 664 IPR
`and 665 IPR—on the merits due to the earlier statutory deadline in those cases, and
`for the later-filed cases—the 923 IPR and 924 IPR—to seek joinder with the
`earlier-filed cases, but leaves it to the parties to decide with which cases to
`proceed.
`To account for both possibilities, the panel authorizes ZTE to file, on or
`before June 15, 2016, renewed Motions for Joinder seeking joinder to the Petitions
`filed by Apple in the 923 IPR and 924 IPR, respectively, and also authorizes Apple
`
`5
`
`

`
`IPR2016-00848 (Patent 5,960,464)
`IPR2016-00923 (Patent 5,812,789)
`IPR2016-00924 (Patent 5,960,464)
`
`IPR2016-00664 (Patent 5,812,789)
`IPR2016-00665 (Patent 5,960,464)
`IPR2016-00847 (Patent 5,812,789)
`
`to file, on or before June 15, 2016, renewed Motions for Joinder seeking joinder to
`the Petitions filed by ZTE in the 664 IPR and 665 IPR, respectively.
`
`
`II. ORDER
`
`Accordingly, it is
`ORDERED that the Motion for Joinder (Paper 3) in IPR2016-00664, the
`Motion for Joinder (Paper 3) in IPR2016-00665, the Motion for Joinder (Paper 2)
`in IPR2016-00847, the Motion for Joinder (Paper 2) in IPR2016-00848, the
`Motion for Joinder (Paper 3) in IPR2016-00923, and the Motion for Joinder (Paper
`3) in IPR2016-00924 are dismissed without prejudice;
`FURTHER ORDERED that Petitioner is authorized to file, on or before
`June 15, 2016, a renewed Motion for Joinder in IPR2016-00847 seeking joinder
`with IPR2016-00664 or, alternatively, with IPR2016-00923;
`FURTHER ORDERED that Petitioner is authorized to file, on or before
`June 15, 2016, a renewed Motion for Joinder in IPR2016-00848 seeking joinder
`with IPR2016-00665 or, alternatively, with IPR2016-00924;
`FURTHER ORDERED that ZTE is authorized to file, on or before June 15,
`2016, renewed Motions for Joinder in IPR2016-00664 and IPR2016-00665 seeking
`joinder with IPR2016-00923 and IPR2016-00924, respectively; and
`FURTHER ORDERED that Apple is authorized to file, on or before June
`15, 2016, renewed Motions for Joinder in IPR2016-00923 and IPR2016-00924
`seeking joinder with IPR2016-00664 and IPR2016-00665, respectively.
`
`6
`
`

`
`IPR2016-00848 (Patent 5,960,464)
`IPR2016-00923 (Patent 5,812,789)
`IPR2016-00924 (Patent 5,960,464)
`
`IPR2016-00664 (Patent 5,812,789)
`IPR2016-00665 (Patent 5,960,464)
`IPR2016-00847 (Patent 5,812,789)
`
`For PETITIONER:
`Lionel M. Lavenue
`Shaobin Zhu
`Finnegan, Henderson, Farabow, Garrett & Dunner LLP
`lionel.lavenue@finnegan.com
`shaobin.zhu@finnegan.com
`
`
`
`
`
`For PATENT OWNER:
`Masood Anjom
`Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing P.C.
`manjom@azalaw.com
`
`7