`571-272-7822
`
`
`Paper No. 12
` Entered: August 24, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS, CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG SEMICONDUCTOR, INC.,
`Petitioner,
`
`v.
`
`RAYTHEON COMPANY,
`Patent Owner.
`____________
`
`Case IPR2016-00962
`Patent 5,591,678
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JENNIFER MEYER CHAGNON, and
`JEFFREY W. ABRAHAM Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`IPR2016-00962
`Patent 5,591,678
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`
`I.
`
`INTRODUCTION
`Samsung Electronics, Co., Ltd., Samsung Electronics America, Inc.,
`and Samsung Semiconductor, Inc. (collectively, “Petitioner” or “Samsung”)
`filed a Petition for inter partes review of claims 1–18 (“the challenged
`claims”) of U.S. Patent No. 5,591,678 (Ex. 1001, “the ’678 patent”).
`Paper 1 (“Pet.”). Concurrently with its Petition, Samsung filed a Motion for
`Joinder with Sony Corp. v. Raytheon Co., Case IPR2016-00209 (“the Sony
`209 IPR”). Paper 3 (“Mot.). Raytheon Company (“Patent Owner”) filed an
`Opposition to Samsung’s Motion for Joinder (Paper 9 (“Opp.”)) and
`Samsung filed a Reply (Paper 10 (“Reply”)). Patent Owner also filed a
`Preliminary Response to the Petition. Paper 11 (“Prelim. Resp.”).
`For the reasons explained below, we institute an inter partes review of
`claims 1–18 of the ’678 patent and grant Samsung’s Motion for Joinder.
`II. RELATED PROCEEDINGS
`The ’678 patent has been asserted in Raytheon Co. v. Samsung
`Electronics Co., No. 2:15-cv-00341 (E.D. Tex.), and Raytheon Co. v. Sony
`Corp., No. 2:15-cv-00342 (E.D. Tex.). Pet. 2–3; Paper 8, 2.
`Sony Corporation (“Sony”) has challenged the ’678 patent in the
`Sony 209 IPR. Pet. 1; Paper 8, 2. In the Sony 209IPR, we instituted inter
`partes review of claims 1–18 of the ’678 patent on the following grounds:
`Reference(s)
`Basis Claim(s) Challenged
`Liu1
`§ 102
`1–4, 6, 7, 10, 11
`Liu and Black2
`§ 103
`2–4, 11
`Liu and Riseman3
`§ 103
`5, 12–16
`
`
`1 U.S. Patent No. 4,422,091, issued Dec. 20, 1983 (Ex. 1003)
`2 U.S. Patent No. 4,426,768, issued Jan. 24, 1984 (Ex. 1007)
`3 U.S. Patent No. 4,106,050, issued Aug. 8, 1978 (Ex. 1009)
`
`
`
`2
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`IPR2016-00962
`Patent 5,591,678
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`Basis Claim(s) Challenged
`Reference(s)
`§ 103
`8
`Liu and Oldham4
`§ 103
`10
`Liu and Wen5
`§ 103
`9
`Liu, Wen, and Ying6
`§ 103
`17
`Liu, Riseman, and Kusunoki7
`§ 103
`18
`Liu, Riseman, and Oldham
`See IPR2016-00209, slip op. at 23–24 (PTAB Mar. 29, 2016) (Paper 12)
`(“Sony 209 Dec.”).
`Sony also has challenged the ’678 patent in Sony Corp. v. Raytheon
`Co., Case IPR2015-01201 (inter partes review instituted as to claims 1–18).
`Pet. 3; Paper 8, 2. Samsung also has challenged the ’678 patent in Samsung
`Electronics, Co. v. Raytheon Co., Case IPR2016-00739 (decision pending).
`Paper 8, 2.
`III.
`INSTITUTION OF INTER PARTES REVIEW
`The Petition in this proceeding asserts the same grounds of
`unpatentability as those on which we instituted review in the Sony 209 IPR.
`Compare Pet. 3–4, 21–60, with Sony 209 Dec. 23–24. Indeed, as Samsung
`notes, the Petition filed in this proceeding is “substantively identical to the
`Sony [209] Petition, containing only minor differences related to formalities
`of a different party filing the petition.” Mot. 5. Samsung further asserts that
`“there are no changes to the facts, citations, evidence, or arguments
`presented in the Sony [209] Petition.” Id. Patent Owner’s Preliminary
`Response does not substantively address the asserted grounds, but reiterates
`
`4 U.S. Patent No. 4,681,718, issued July 21, 1987 (Ex. 1005)
`5 U.S. Patent No. 3,846,198, issued Nov. 5, 1974 (Ex. 1004)
`6 U.S. Patent No. 3,864,819, issued Feb. 11, 1975 (Ex. 1006)
`7 JP Appl. Pub. 3-108776, published May 8, 1991 (Kusunoki is a Japanese-
`language reference (Ex. 1014); citations to Kusunoki are to the certified
`English translation submitted by Petitioner (Ex. 1008))
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`the arguments presented in its Opposition to Petitioner’s Motion for Joinder,
`discussed below.
`For the same reasons set forth in our institution decision in the
`Sony 209 IPR, we determine that the information presented in Samsung’s
`Petition shows a reasonable likelihood that Petitioner would prevail in
`showing that (a) claims 1–4, 6, 7, 10, and 11 are anticipated by Liu,
`(b) claims 2–4 and 11 would have been obvious in view of Liu and Black,
`(c) claims 5 and 12–16 would have been obvious in view of Liu and
`Riseman, (d) claim 8 would have been obvious in view of Liu and Oldham,
`(e) claim 10 would have been obvious in view of Liu and Wen, (f) claim 9
`would have been obvious in view of Liu, Wen, and Ying, (g) claim 17 would
`have been obvious in view of Liu, Riseman, and Kusunoki , and (h) claim 18
`would have been obvious in view of Liu, Riseman, and Oldham. See Sony
`209 Dec. 11–23. Accordingly, we institute an inter partes review on the
`same grounds as those on which we instituted review in the Sony 209 IPR.
`We do not institute inter partes review on any other grounds.
`IV. GRANT OF MOTION FOR JOINDER
`The Petition and Motion for Joinder in this proceeding were accorded
`a filing date of April 28, 2016. See Paper 6. Thus, Petitioner’s Motion for
`Joinder is timely because joinder was requested no later than one month
`after the institution date of the Sony 209 IPR, i.e., March 29, 2016. See
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); Mot. 3; see also 35 U.S.C.
`§ 315(b) (indicating that the time limitation set forth therein “shall not apply
`to a request for joinder under subsection (c)”).
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`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.
`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. See Kyocera Corp. v. Softview LLC,
`Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`As noted, the Petition in this case asserts the same grounds of
`unpatentability on which we instituted review in the Sony 209 IPR. See
`Mot. 2–5; Pet. 3–4, 21–60; Sony 209 Dec. 23–24. Samsung also relies on
`the same prior art analysis and expert testimony submitted by Sony. See
`Mot. 4–6. Indeed, the Petition is nearly identical to the petition filed by
`Sony with respect to the grounds on which review was instituted in the
`Sony 209 IPR. See id. at 2–3. Thus, this inter partes review does not
`present any ground or matter not already at issue in the Sony 209 IPR.
`
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`If joinder is granted, Samsung “agrees to take an ‘understudy’ role” in
`the joined proceeding,8 absent termination of Sony as a party. Id. at 7–8. In
`particular, Samsung agrees that, in the joined proceeding,
`(a) all filings by [Petitioner] in the joined proceeding be
`consolidated with [the filings of the petitioner in the Sony IPR],
`unless a filing solely concerns issues that do not involve [the
`petitioner in the Sony IPR]; (b) [Petitioner] shall not be permitted
`to raise any new grounds not already instituted by the Board in
`the [Sony IPR], or introduce any argument or discovery not
`already introduced by [the petitioner in the Sony IPR];
`(c) [Petitioner] shall be bound by any agreement between [Patent
`Owner] and [the petitioner in the Sony IPR] concerning
`discovery and/or depositions; and (d) [Petitioner] at deposition
`shall not receive any direct, cross examination or redirect time
`beyond that permitted for [the petitioner in the Sony IPR] alone
`under either 37 C.F.R. § 42.53 or any agreement between [Patent
`Owner] and [the petitioner in the Sony IPR].
`Id. at 7 (quoting Mylan Pharms. Inc. v. Novartis AG, Case IPR2014-00550,
`slip op. at 5 (PTAB Apr. 10, 2015) (Paper 38) (alterations in Petitioner’s
`Motion)). Because Samsung expects to participate only in a limited
`capacity, Samsung submits that joinder will not impact the trial schedule for
`the Sony 209 IPR. Mot. 8; Reply 2–3.
`In its Opposition, Patent Owner argues that Petitioner’s Motion
`“abuses the IPR process and impairs judicial economy.” Opp. 1. In
`particular, Patent Owner argues that the present Petition is the fourth in a
`“coordinated series of petitions” filed by Sony and Samsung (as co-
`defendants in the underlying litigation proceedings). Id.; see id. at 3.
`
`
`8 Samsung represents that Sony “has no position as to [Samsung] joining in
`an ‘understudy’ role” in the Sony 209 IPR. Mot. 8.
`
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`Patent Owner cites several decisions in which, according to Patent
`Owner, the Board has “repeatedly and consistently exercised its discretion to
`deny duplicative, late-filed petitions that rely on the same prior art to
`challenge the same claims.” Id. at 5–7. The cited decisions are not
`precedential, and we are not bound by those panel decisions. Nor do we
`agree that the Board has “repeatedly and consistently” denied such petitions
`as Patent Owner suggests. Instead, our review of the decisions cited by
`Patent Owner reveals that each panel’s determination to exercise its
`discretion to deny a petition is based on the specific facts and circumstances
`of each particular proceeding.
`In Unified Patents, Inc. v. PersonalWeb Technologies, LLC, cited by
`Patent Owner, the panel denied joinder, pointing to the following factors as
`guiding the decision: (1) the second-filed petition added additional
`substantive issues to the earlier proceeding—namely, the question of
`whether all real-parties-in-interest had been identified; (2) Petitioner did not
`address how joinder would impact the schedule of several related inter
`partes review proceedings; and (3) nearly all of the challenged claims had
`previously been determined to be unpatentable in an earlier final written
`decision. Case IPR2014-00702, slip op. at 4–8 (PTAB July 24, 2014)
`(Paper 12). The instant Petition, however, adds no additional substantive
`issues to the earlier proceeding, Samsung has agreed to take on only an
`understudy role in the Sony 209 IPR, thus, no change to the schedule is
`necessary, and no final written decision has been issued by the Board
`regarding the ’678 patent.
`
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`In ZTE Corp. v. ContentGuard Holdings Inc., the earlier proceeding
`was terminated prior to the Board’s decision whether to join the later-filed
`petition thereto. Case IPR2013-00454, slip op. at 2 (PTAB Sept. 25, 2013)
`(Paper 13). The Sony 209 IPR, however, is still pending.
`In Maxlinear, Inc. v. Cresta Technology Corp., also cited by Patent
`Owner, the second Petitioner did not file a motion for joinder with the earlier
`filed Petition, but instead asked the panel to institute trial and then hold the
`grounds in abeyance until and unless a settlement of the related earlier-filed
`proceeding occurred. Case IPR2015-00593, slip op. at 5 (PTAB Aug. 14,
`2015) (Paper 9). Similarly, in Initiative for Responsibility In Drug Pricing
`LLC v. Wyeth LLC, a motion for joinder was not filed. Case IPR2014-
`01259, slip op. at 6–7 (PTAB Feb. 13, 2015) (Paper 8) (denying institution
`based on 35 U.S.C. § 325(d), and noting that the earlier-filed trial was at a
`late stage—i.e., oral hearing had already occurred and the statutory deadline
`for issuing a final written decision was approximately two months away—
`and Petitioner in the later-filed petition was not time-barred from filing a
`later petition in the unlikely case that a final written decision did not issue
`due to settlement of the earlier trial).
`In the remaining cases cited by Patent Owner, the later-filed petitions
`were not substantively identical to the earlier-filed petitions, as is the case
`here, but instead included different and/or additional grounds. See
`Medtronic, Inc. v. NuVasive, Inc., Case IPR2014-00487, slip op. at 5–7
`(PTAB Sept. 11, 2014) (Paper 8) (denying joinder because the later-filed
`petition was a “do-over” from an earlier petition filed by same Petitioner; the
`earlier-filed proceeding was 2 months from oral hearing and on different
`grounds); Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc.,
`
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`Case IPR2014-00436, slip op. at 11–15 (PTAB June 19, 2014) (Paper 17)
`(declining institution on some asserted grounds based on 35 U.S.C. § 325(d)
`(as “involv[ing] the same, or substantially the same, prior art . . . and the
`same, or substantially the same, arguments previously presented” in the
`earlier petition), and denying other asserted grounds for substantive reasons;
`finding joinder motion, thus, moot); Intelligent Bio-Systems, Inc. v. Illumina
`Cambridge Ltd., Case IPR2013-00324, slip op. at 2–7 (PTAB Nov. 21,
`2013) (Paper 19) (denying joinder because same petitioner filed similar, but
`different, grounds after several months delay; Patent Owner will address
`new reference in motion to amend in the earlier proceeding).
`On the other hand, as Petitioner notes, the “Board routinely grants
`motions for joinder where the party seeking joinder introduces identical
`arguments and the same grounds raised in the existing proceeding.” Reply 1
`(citing Perfect World Entm’t, Inc. v. Uniloc USA, Inc., Case IPR2015-01026,
`(PTAB Aug. 3, 2015) (Paper 10); Fujitsu Semiconductor Ltd. v. Zond, LLC,
`Case IPR2014-00845 (PTAB Oct. 2, 2014) (Paper 14); Enzymotec Ltd. v.
`Neptune Techs. & Bioresources, Inc., Case IPR2014-00556 (PTAB July 9,
`2014) (Paper 19)); see also id. at 4 (citing Dot Hill Sys. Corp. v. Crossroads
`Sys., Inc., Case IPR2015-00825, slip op. at 8 (PTAB Sept. 17, 2015)
`(Paper 20) (granting motion for joinder because any potential prejudice to
`patent owner due to joinder “does not outweigh the prejudice to Dot Hill of
`losing its opportunity to challenge the claims of the” challenged patent)).
`Having considered Petitioner’s Motion, as well as Patent Owner’s
`Opposition thereto, we agree with Petitioner that joinder with the Sony 209
`IPR is appropriate under the particular facts and circumstances of this case.
`Accordingly, we grant Petitioner’s Motion for Joinder.
`
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`V. ORDER
`Accordingly, it is
`ORDERED that an inter partes review is instituted in IPR2016-00962
`as to claims 1–18 of U.S. Patent No. 5,591,678 on the following grounds:
`Claims 1–4, 6, 7, 10, and 11 under 35 U.S.C. § 102(b) as
`anticipated by Liu;
`Claims 2–4 and 11 under 35 U.S.C. § 103(a) as obvious in view
`of Liu and Black;
`Claims 5 and 12–16 under 35 U.S.C. § 103(a) as obvious in
`view of Liu and Riseman;
`Claim 8 under 35 U.S.C. § 103(a) as obvious in view of Liu and
`Oldham;
`Claim 10 under 35 U.S.C. § 103(a) as obvious in view of Liu
`and Wen;
`Claim 9 under 35 U.S.C. § 103(a) as obvious in view of Liu,
`Wen, and Ying;
`Claim 17 under 35 U.S.C. § 103(a) as obvious in view of Liu,
`Riseman, and Kusunoki; and
`Claim 18 under 35 U.S.C. § 103(a) as obvious in view of Liu,
`Riseman, and Oldham;
`FURTHER ORDERED that the Motion for Joinder with
`IPR2016-00209 is granted, and Samsung is joined as a petitioner in
`IPR2016-00209;
`FURTHER ORDERED that IPR2016-00962 is terminated under
`37 C.F.R. § 42.72, and all further filings shall be made only in
`IPR2016-00209;
`
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`FURTHER ORDERED that, subsequent to joinder, the grounds for
`trial in IPR2016-00209 remain unchanged;
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`Order in place for IPR2016-00209 (Paper 21) remains unchanged, subject to
`any stipulations agreed to by the parties;
`FURTHER ORDERED that in IPR2016-00209, Sony and Samsung
`will file each paper, except for a motion that does not involve the other
`party, as a single, consolidated filing, subject to the word counts or page
`limits set forth in 37 C.F.R. § 42.24, and shall identify each such filing as a
`consolidated filing;
`FURTHER ORDERED that for any consolidated filing, if Samsung
`wishes to file an additional paper to address points of disagreement with
`Sony, Samsung must request authorization from the Board to file a motion
`for additional words or pages, and no additional paper may be filed unless
`the Board grants such a motion;
`FURTHER ORDERED that Sony and Samsung shall collectively
`designate attorneys to conduct the cross-examination of any witness
`produced by Patent Owner and the redirect of any witness produced by Sony
`and Samsung, within the timeframes set forth in 37 C.F.R. § 42.53(c) or
`agreed to by the parties;
`FURTHER ORDERED that Sony and Samsung shall collectively
`designate attorneys to present a consolidated argument at the oral hearing, if
`requested and scheduled;
`FURTHER ORDERED that the case caption in IPR2016-00209 shall
`be changed to reflect joinder of Samsung as a petitioner in accordance with
`the attached example; and
`
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`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2016-00209.
`
`
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`12
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`IPR2016-00962
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`PETITIONER:
`Heath J. Briggs
`Patrick J. McCarthy
`GREENBERG TRAURIG, LLP
`briggsh@gtlaw.com
`mccarthyp@gtlaw.com
`RaytheonGTIPR@gtlaw.com
`
`PATENT OWNER:
`Thomas J. Filarski
`John L. Abramic
`Daniel S. Stringfield
`Brian G. Fahrenbach
`STEPTOE & JOHNSON LLP
`tfilarski@steptoe.com
`jabramic@steptoe.com
`dstringfield@steptoe.com
`bfahrenbach@steptoe.com
`678IPR@steptoe.com
`
`
`
`
`
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`13
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`SAMSUNG ELECTRONICS, CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG SEMICONDUCTOR, INC.,
`Petitioner,
`
`v.
`
`RAYTHEON COMPANY,
`Patent Owner.
`____________
`
`Case IPR2016-002099
`Patent 5,591,678
`____________
`
`
`
`
`
`
`9 Case IPR2016-00962 has been joined with the instant proceeding.