throbber
Trials@uspto.gov
`571-272-7822
`
`
`
` Paper No. 16
` Entered: July 20, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC., MICROSOFT CORPORATION, MICROSOFT MOBILE
`OY, and MICROSOFT MOBILE INC.,
`Petitioner,
`
`
`
`
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`
`____________
`
`Case IPR2017-00927
`Patent 8,218,481 B2
`____________
`
`
`Before WILLIAM V. SAINDON, CHRISTOPHER L. CRUMBLEY, 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 IPR2017-00927
`Patent No. 8,218,481 B2
`
`
`INTRODUCTION
`I.
`Apple, Inc., Microsoft Corporation, Microsoft Mobile Oy, and
`Microsoft Mobile, Inc. (f/k/a Nokia Inc.) (“Apple and Microsoft”) 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 2
`(“Pet.”). Concurrently, with the Petition, Apple and Microsoft filed a
`Motion for Joinder with ZTE (USA) Inc., Samsung Electronics Co., Ltd., and
`Samsung Electronics America, Inc. v. Evolved Wireless, LLC, Case
`IPR2016-01342. Paper 3. Patent Owner, Evolved Wireless, LLC (“Evolved
`Wireless”), has not filed a preliminary response to the Petition1 or an
`opposition or any other paper relating to the Motion for Joinder. For the
`reasons explained below, we grant the Motion for Joinder.
`THE PETITION WARRANTS INSTITUTION
`II.
`OF INTER PARTES REVIEW
`According to Apple and Microsoft, the Petition in this proceeding
`“substantively copies the petition filed in co-pending IPR2016-01342” (Pet.
`1) and “includes only the grounds filed in IPR2016-01342 and is
`substantively identical on those grounds.” Paper 3, 1. For the reasons set
`forth in our institution decision in IPR2016-01342, see Paper 11, we
`determine that the information presented in the Petition establishes there is a
`reasonable likelihood that Apple and Microsoft will prevail in showing
`claims 1–4, 6, 8–11, 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 February 21, 2017. Paper 6, 1. Thus, the Motion for Joinder
`
`
`1 The preliminary response was due on June 13, 2017. Paper 6, 1.
`
`
`
`2
`
`

`

`Case IPR2017-00927
`Patent No. 8,218,481 B2
`
`was timely because joinder was requested no later than one month after the
`institution date of IPR2016-01342, i.e., January 20, 2017.2 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.
`
`
`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 IPR2016-01342. See Paper 3, 2–3. Apple
`and Microsoft also rely on the same prior art analysis and expert testimony
`submitted by the Petitioner in IPR2016-01342. See id. at 4. Indeed, the
`instant Petition is nearly identical to the Petition in IPR2016-01342 with
`
`
`2 February 20, 2017, was a Federal holiday. See 37 C.F.R. § 1.7(a) (“When
`the day . . . for taking any action or paying any fee in the United States
`Patent and Trademark Office falls on Saturday, Sunday, or on a Federal
`holiday within the District of Columbia, the action may be taken . . . on the
`next succeeding business day.”).
`
`
`
`3
`
`

`

`Case IPR2017-00927
`Patent No. 8,218,481 B2
`
`respect to the grounds on which trial was instituted. See id. Thus, this inter
`partes review does not present any ground or matter not already at issue in
`IPR2016-01342.
`If joinder is granted, Apple and Microsoft anticipate participating in
`the proceeding in a limited capacity. Id. at 4, 6–7. Apple and Microsoft
`agree to:
`take an “understudy” role as petitioners in other, similarly joined
`proceedings have taken. In other words, so long as ZTE and
`Samsung maintain their IPR, all filings by Petitioner in the joined
`proceeding will be consolidated with the filings of ZTE and
`Samsung, unless a filing solely concerns issues that do not
`involve ZTE or Samsung; Petitioner will not introduce any
`argument or discovery not introduced by ZTE and Samsung; and
`Petitioner assents to ZTE and Samsung leading any depositions
`associated with the joined proceeding. Thus, if joined, there will
`be only one set of briefing on the issues, rather than briefing from
`both ZTE and Samsung and Petitioner. Petitioner will assume
`the primary role only if ZTE and Samsung cease to participate.
`
`Id. at 6–7. With regard to the trial schedule, Apple and Microsoft expressly
`consent to the trial schedule in IPR2016-01342. Id. at 5.
`
`The ’481 patent is the subject of six other pending IPRs: IPR2016-
`00758, IPR2016-00981, IPR2016-01342, IPR2016-01349, IPR2017-00068,
`and IPR2017-00106. See Pet. 2. IPR2017-00068 (Paper 11) and IPR2017-
`00106 (Paper 14) have been joined with IPR2016-00758. IPR2016-01349
`(Paper 15) has been joined with IPR2016-00981. IPR2016-01342 (Paper
`13) and IPR2016-01349 (Paper 14) have been consolidated for trial with
`IPR2016-00758 (Paper 24).
`The grounds for trial in the consolidated IPR2016-00758 proceedings
`(Paper 24, 4–5) include all the grounds asserted in the Petition. Pet. 25–26.
`
`
`
`4
`
`

`

`Case IPR2017-00927
`Patent No. 8,218,481 B2
`
`Apple and Microsoft were joined as petitioners in the consolidated IPR2016-
`00758 proceedings pursuant to the joinder order in IPR2016-00068 (Paper
`11, 5) entered February 23, 2017. IPR2016-00758 has been proceeding
`according to a Revised Scheduling Order (Paper 25) entered February 23,
`2017.
`
`On the record before us 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 IPR2016-01342 (which
`has been consolidated for trial with IPR2016-00758) is granted;
` FURTHER ORDERED that the grounds for trial in IPR2016-00758
`remain unchanged; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the records of IPR2016-00758 and IPR2016-01342.
`
`
`
`5
`
`

`

`Case IPR2017-00927
`Patent No. 8,218,481 B2
`
`PETITIONER:
`
`Charles M. McMahon
`Hersh H. Mehta
`MCDERMOTT WILL & EMERY
`cmcmahon@mwe.com
`hmehta@mwe.com
`
`James M. Glass
`John McKee
`Kevin P.B. Johnson
`Todd M. Briggs
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`jimglass@quinnemanuel.com
`kevinjohnson@quinnemanuel.com
`johnmckee@quinnemanuel.com
`toddbriggs@quinnemanuel.com
`
`
`PATENT OWNER:
`
`Cyrus Morton
`Ryan Schultz
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`rschultz@robinskaplan.com
`
`
`
`
`
`6
`
`

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