Paper No. 14
`Entered: February 23, 2017
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`
`____________
`
`Case IPR2017-00106
`Patent 8,218,481 B2
`____________
`
`
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, PETER P. CHEN, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`McMILLIN, Administrative Patent Judge.
`
`
`DECISION
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`Entered: February 23, 2017
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`
`____________
`
`Case IPR2017-00106
`Patent 8,218,481 B2
`____________
`
`
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, PETER P. CHEN, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`McMILLIN, Administrative Patent Judge.
`
`
`DECISION
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`
`Case IPR2017-00106
`Patent No. 8,218,481 B2
`
`
`I.
`INTRODUCTION
`Samsung Electronics Co., Ltd. and Samsung Electronics America,
`Inc., (collectively, “Samsung”) filed a Petition requesting an inter partes
`review of claims 1–4, 6, 8–11, and 13 of U.S. Patent No. 8,218,481 B2 (Ex.
`1001, “the ’481 patent”). Paper 1 (“Pet.”). Concurrently with its Petition,
`Samsung filed a Motion for Joinder with ZTE (USA) Inc., HTC Corporation,
`and HTC America, Inc. v. Evolved Wireless, LLC, Case IPR2016-00758.
`Paper 2. On December 30, 2016, Samsung filed Petitioners’ Motion
`Requesting Partial Dismissal of Petition which states:
`Petitioners hereby request partial dismissal of the instant
`IPR2017-00106 Petition as to those claims on which trial was not
`instituted in IPR2016-00758. Specifically, Petitioners request
`partial dismissal of the instant Petition only as to claims 4 and
`11. Patent Owner Evolved Wireless, LLC does not oppose this
`request.
`
`In light of the foregoing, Petitioners respectfully request
`that the Board institute an IPR on the remaining grounds in the
`instant Petition and grant their Motion for Joinder (Paper 2) with
`the IPR2016-00758 proceeding with respect to the instituted
`grounds.
`
`Paper 13, 1.
`
`Patent Owner, Evolved Wireless, LLC (“Evolved Wireless”), has not
`filed a preliminary response to the Petition.1 Evolved Wireless filed an
`opposition to the Motion for Joinder (Paper 7) but since has withdrawn its
`opposition. For the reasons explained below, we grant the Motion for
`Joinder.
`
`
`1 The preliminary response was due on January 31, 2017. Paper 6, 1–2.
`
`
`
`2
`
`
`
`Case IPR2017-00106
`Patent No. 8,218,481 B2
`
`
`II.
`
`THE PETITION WARRANTS INSTITUTION
`OF INTER PARTES REVIEW
`According to Samsung, the Petition in this proceeding “substantively
`copies the petition in co-pending IPR2016-00758” (Pet. 1.) and “raises the
`same grounds of unpatentability for which the 758 Proceeding was
`instituted, challenges the same claims, and relies of the same prior art,
`arguments and evidence.” Paper 2, 1–2. For the reasons set forth in our
`institution decision, Paper 12, in IPR2016-00758, we determine that the
`information presented in the Petition establishes there is a reasonable
`likelihood that Samsung will prevail in showing claims 1–3, 6, 8–10, and 13
`of the ’481 patent are unpatentable.
`III. GRANT OF MOTION FOR JOINDER
`The Petition and Motion for Joinder in this proceeding were accorded
`a filing date of October 17, 2016. See Paper 6. Thus, the Motion for Joinder
`was timely because joinder was requested no later than one month after the
`institution date of IPR2016-00758, i.e., September 16, 2016.2 See 37 C.F.R.
`§ 42.122(b).
`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.
`
`
`
`
`2 October 16, 2016, was a Sunday.
`
`
`
`3
`
`
`
`Case IPR2017-00106
`Patent No. 8,218,481 B2
`
`By regulation, the Director’s discretion has been delegated to the board.
`37 C.F.R. § 42.4(a). A motion for joinder should generally (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.
`As noted, the Petition herein asserts the same unpatentability grounds
`on which we instituted trial in IPR2016-00758. Paper 2, 1–2. Samsung also
`relies on the same prior art analysis and expert testimony submitted by the
`Petitioner in IPR2016-00758. Id. Indeed, the instant Petition is nearly
`identical to the Petition in IPR2016-00758 with respect to the grounds on
`which trial was instituted. Id. Thus, this inter partes review does not
`present any ground or matter not already at issue in IPR2016-00758.
`If joinder is granted, Samsung anticipates participating in the
`proceeding in a limited capacity. Id. at 2, 5, 8. Samsung agrees to:
`(1) consolidate filings with ZTE and HTC; (2) refrain from
`raising any new grounds not already considered by the Board in
`the 758 Proceeding; (3) be bound by any agreement between
`Patent Owner and ZTE and HTC concerning discovery and/or
`depositions; (4) limit any direct, cross-examination or redirect
`time beyond that permitted for ZTE and HTC under either
`37 C.F.R. § 42.53 or any agreement between ZTE and HTC and
`the Patent Owner, such that Petitioner’s participation in the 758
`Proceeding does not result in any additional time being required
`for any deposition; and (5) limit any presentation at oral hearing
`to unused time previously allocated to ZTE and HTC.
`
`
`Id.
`With regard to the trial schedule, joinder will require modification of
`
`the schedule entered in IPR2016-00758 (see Paper 13 (Scheduling Order) as
`
`
`
`4
`
`
`
`Case IPR2017-00106
`Patent No. 8,218,481 B2
`
`modified (see Papers 15, 21, 22, and 23). The Board has the authority to
`modify the schedule including the 1 year final determination time period.
`See 35 U.S.C. § 316(a)(11). We note that Evolved Wireless has withdrawn
`its opposition to joinder and that all the parties to this proceeding and
`IPR2016-00758 have agreed to a modified schedule which we adopt in the
`Revised Scheduling Order being entered on the same day as this Decision.
`On the record before us, in particular the agreement between the
`parties, and having weighed the factors related to joinder, we exercise our
`discretion to grant the Motion for Joinder.
`IV. ORDER
`
`It is hereby:
`ORDERED that the Motion for Joinder with IPR2016-00758 is
`granted;
`FURTHER ORDERED that Samsung Electronics Co., Ltd. and
`Samsung Electronics America, Inc. are joined as petitioners in IPR2016-
`00758;
` FURTHER ORDERED that the grounds for trial in IPR2016-00758
`remain unchanged;
`FURTHER ORDERED that the case caption in IPR2016-00758 shall
`be changed to reflect joinder of Samsung as a petitioner;
`FURTHER ORDERED that the Revised Scheduling Order entered in
`the consolidated IPR2016-00758 shall replace the original Scheduling Order
`(Paper 13) as modified (Papers 15, 21, 22, and 23) and IPR2016-00758 shall
`proceed in accordance with the Revised Scheduling Order; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2016-00758.
`
`
`
`
`5
`
`
`
`Case IPR2017-00106
`Patent No. 8,218,481 B2
`
`
`PETITIONER:
`
`James M. Glass
`Todd M. Briggs
`John McKee
`Kevin P.B. Johnson
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`jimglass@quinnemanuel.com
`toddbriggs@quinnemanuel.com
`johnmckee@quinnemanuel.com
`kevinjohnson@quinnemanuel.com
`
`Charles M. McMahon
`Hersh H. Mehta
`MCDERMOTT WILL & EMERY
`cmcmahon@mwe.com
`hmehta@mwe.com
`
`Stephen S. Korniczky
`Martin Bader
`Ericka J. Schulz
`SHEPPARD, MULLIN, RICHTER & HAMPTON, LLP
`skorniczky@sheppardmullin.com
`mbader@sheppardmullin.com
`eschulz@sheppardmullin.com
`
`
`
`PATENT OWNER:
`
`Cyrus Morton
`Ryan Schultz
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`rschultz@robinskaplan.com
`
`
`
`
`
`6
`
`
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