Trials@uspto.gov
`571.272.7822
`
` Paper No. 23
` Entered: October 2, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION, HTC AMERICA, INC.,
`ZTE CORPORATION, AND ZTE (USA), INC.,
`Petitioner,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner.
`
`Case IPR2017-01081
`Patent 8,457,676 B2
`
`Before BRYAN F. MOORE, GREGG I. ANDERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review and
`Grant of Motion for Joinder to IPR2016-01493
`37 C.F.R. §§ 42.108, 42.122(b)
`
`
`571.272.7822
`
` Paper No. 23
` Entered: October 2, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION, HTC AMERICA, INC.,
`ZTE CORPORATION, AND ZTE (USA), INC.,
`Petitioner,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner.
`
`Case IPR2017-01081
`Patent 8,457,676 B2
`
`Before BRYAN F. MOORE, GREGG I. ANDERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review and
`Grant of Motion for Joinder to IPR2016-01493
`37 C.F.R. §§ 42.108, 42.122(b)
`
`
`
`IPR2017-01081
`Patent 8,457,676 B2
`
`
`
`I.
`
`INTRODUCTION
`Petitioner, HTC Corporation, HTC America, Inc., ZTE Corporation,
`and ZTE (USA), Inc. (collectively, “HTC et al.”), filed a Petition (“Pet.”) on
`March 13, 2017 (Paper 1) requesting inter partes review of claims 1, 3, 19,
`and 21 of U.S. Patent No. 8,457,676 B2 (“the ’676 patent,” Ex. 1001).
`Pet. 1. Along with the Petition, HTC et al. filed a Motion for Joinder
`(“Motion,” Paper 3) with Case IPR2016-01493, Apple Inc. v. Cellular
`Communications Equipment LLC (“’1493 IPR”), a pending inter partes
`review involving the ’676 patent. Paper 3, 1. Cellular Communications
`Equipment LLC is Patent Owner.
`Patent Owner filed a Preliminary Response (“Prelim. Resp.,” Paper 9)
`and an Opposition to Motion for Joinder (“Opp.,” Paper 7). Patent Owner
`opposes HTC et al.’s Motion. Prelim. Resp. 1–11. For the reasons
`described below, we institute an inter partes review of all the challenged
`claims and grant HTC et al.’s Motion for Joinder.
`II. ANALYSIS
`We start with whether or not to institute trial and proceed to joinder.
`A. Institution of Trial
`The Board instituted a trial in the ’1493 IPR on the following ground:
`whether claims 1 and 19 were unpatentable over U.S. Patent Application
`Publication No. 2004/0223455 to Fong (“Fong”) and R2-052744, “Filtering
`for UE Power Headroom Measurement,” TSG-RAN WG2 #49 Meeting,
`Seoul, Korea, November 7-11, 2005 (“Ericsson”) under 35 U.S.C. § 103(a)
`and whether claims 3 and 21 were unpatentable over the combination of
`Fong, Ericsson, and U.S. Patent No. 6,445,917 to Bark under 35 U.S.C. §
`103(a) (“Bark”). ’1493 IPR, slip. op. at 4–5, 18–19 (PTAB January 31,
`
`
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`2
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`IPR2017-01081
`
`Patent 8,457,676 B2
`2017) (Paper 7) (“’1493 DI”). The instant Petition asserts the same grounds
`as that on which the Board instituted review in the ’1493 IPR. Compare Pet.
`8–64, with ’1493 DI, 4–5, 18–19; see also Paper 3, 3 (“The grounds
`presented in the present petition are identical to those presented by Apple in
`its petition [in the ’1493 IPR] upon which trial was instituted.”).
`Patent Owner opposes institution. Prelim. Resp. 1. Patent Owner
`raises the time bar under 35 U.S.C. § 315(b), which states, in part, “[a]n inter
`partes review may not be instituted if the petition requesting the proceeding
`is filed more than 1 year after the date on which the petitioner … is served
`with a complaint alleging infringement of the patent.” Id. at 7–8. Patent
`Owner acknowledges “previous Board decisions permitting institution of
`copy-cat petitions that would otherwise be time-barred when a request for
`joinder to an instituted trial is filed with the copy-cat petition.” Opp. at 3.
`Patent Owner first attempts to distinguish “filing a petition” from a
`“request for joinder” as precluding joinder under 35 U.S.C. § 315(c).
`Prelim. Resp. 5–8. This argument is unsupported by any precedent and we
`decline to accept it. Id.
`Patent Owner next argues
`[t]he second sentence of §315(b) makes the time-bar inapplicable
`to the request for joinder, but the statutory language does nothing
`to alter or affect the institution decision which, according to
`§315(c), must be made as a prerequisite before joinder can even
`be considered. In making the institution decision, §315(b) very
`plainly states
`that a
`time-barred petition “may not be
`instituted . . . .”
`
`Id. at 8. We also decline to determine that 37 C.F.R. § 42.122(b), which
`allows joinder of an otherwise time-barred Petition, is “not a valid
`regulation,” as Patent Owner argues. Id. We are not persuaded by these
`
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`IPR2017-01081
`
`Patent 8,457,676 B2
`arguments and decline to abrogate 37 C.F.R. § 42.122(b) as suggested by
`Patent Owner and deny institution based on 35 U.S.C. § 315(b).
`B. Joinder
`An inter partes review may be joined with another inter partes review,
`subject to the provisions of 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 313 or the expiration of the time for
`filing such a response, determines warrants the institution of an
`inter partes review under section 314.
`
`As the moving party, HTC et al. 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 unpatentability asserted in the petition; and (3) explain what
`impact (if any) joinder would have on the trial schedule for the existing
`review. Kyocera Corp. v. Softview LLC, Case IPR2013-00004, slip. op. at
`3–4 (PTAB April 24, 2013) (Paper 15). As noted above, the Petition asserts
`the same ground and is virtually identical in arguments and evidence to the
`petition in the ’1493 IPR.
`HTC et al. filed its Motion for Joinder on March 13, 2017. Paper 3.
`The Board instituted inter partes review in the ’1493 IPR on February 13,
`2017. ’1493 IPR, Paper 7. Accordingly, the filing date of the Motion
`satisfies the joinder filing requirement, as set forth in 37 C.F.R. § 42.122.
`See 37 C.F.R. § 42.122(b) (2016) (“Any request for joinder must be filed . . .
`
`4
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`IPR2017-01081
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`Patent 8,457,676 B2
`no later than one month after the institution date of any inter partes review
`for which joinder is requested”).
`We have reviewed Patent Owner’s arguments (see Opp. 7–11)
`opposing the Motion for Joinder, which are similar to those discussed above.
`See supra § II.A. We find them unpersuasive for the same reasons. Patent
`Owner first argues the Motion was not authorized by the Board. Id. at 6–7.
`However, as noted above, our regulations authorize the filing of a motion for
`joinder “no later than one month after the institution date of any inter partes
`review for which joinder is requested.” 37 C.F.R. § 42.122(b). Patent
`Owner next argues that the Petition is untimely under 35 U.S.C. § 315(b)
`because it was filed more than a year after HTC et al. were served with the
`complaint in the underlying litigation. Opp. 7–11. As such, Patent Owner
`argues joinder is not permitted under 35 U.S.C. § 315(c) because the Petition
`was not properly filed in the first instance. Id. Yet Patent Owner cites no
`authority for its argument. Further, § 315(c) allows the Board, under the
`authority of the Director, to exercise its discretion and join parties to an inter
`partes review previously instituted.
`Under the current schedule for the ’1493 IPR, several of Petitioner’s
`due dates have passed. Most notably, Petitioner’s Reply date, August 14,
`2017, has passed. See ’1493 IPR (Scheduling Order, Paper 8). HTC et al.
`agreed, however, to take an understudy role to petitioner Apple in the ’1493
`IPR. See also Paper 2, 8–9 (assurances). As explained below, we go further
`and adopt Patent Owner’s suggestions to ensure the efficient completion of
`the ’1501 IPR.
`HTC et al. also demonstrates sufficiently that joinder will promote
`efficiency. See id. Absent Board authorization, HTC et al. will not actively
`participate in further proceedings. HTC et al. is not authorized to file any
`5
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`IPR2017-01081
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`Patent 8,457,676 B2
`papers for which the due date has passed. HTC et al. will be held to the
`procedure detailed in the Patent Owner’s Opposition to Petitioner’s Motion
`for Joinder at pages 12 and 13. In sum, HTC et al. must adopt the prior
`positions taken by Apple; no additional testimony will be elicited by HTC et
`al. from Dr. Haas; Apple is in control of the joined proceeding; HTC et al.
`will not make any filings without our approval; and HTC et al. will not be
`allotted any time for argument at the November 8, 2017 hearing. Opp. 12–
`13.
`
`The Board expects HTC et al., Apple, and Patent Owner to meet and
`confer regarding any disputes between them and to contact the Board only if
`such matters cannot be resolved.
`III. CONCLUSION
`We grant HTC et al.’s Motion for Joinder because: 1) the challenge in
`the instant Petition is identical to the ground instituted in ’1493 IPR;
`2) joinder will not impact the existing trial schedule in ’1493 IPR; and
`3) joinder will promote efficiency. We institute an inter partes review in
`this proceeding on the same ground as that on which the Board instituted
`inter partes review in the ’1493 IPR and join this proceeding to ’1493 IPR.
`IV. ORDER
`For the reasons given, it is
`ORDERED that HTC et al.’s Motion for Joinder is granted;
`
`FURTHER ORDERED that IPR2017-01081 is instituted and HTC et
`
`al. are joined with IPR2016-01493;
`FURTHER ORDERED that the ground on which IPR2016-01493 was
`instituted remains unchanged and no other grounds are included in the joined
`proceeding;
`
`6
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`IPR2017-01081
`
`Patent 8,457,676 B2
`FURTHER ORDERED that the Scheduling Order (Paper 8) in
`IPR2016-01493 shall govern the schedule of the joined proceeding;
`FURTHER ORDERED that, throughout the joined proceeding, Apple
`shall file all papers as a single consolidated filing;
`FURTHER ORDERED that HTC et al. are bound by any discovery
`agreements between Patent Owner and Apple in IPR2016-01493 and that
`HTC et al. shall not seek any discovery beyond that sought by Apple;
`FURTHER ORDERED that HTC et al. shall not take an active role in
`these proceedings without prior authorization of the Board;
`FURTHER ORDERED that Apple in the joined proceeding shall
`designate attorney(s) to conduct the cross-examination, redirect, and any
`other discovery, within the timeframes set forth by the rules in the joined
`proceeding, including 37 C.F.R. § 42.53(c), or as the parties otherwise agree
`upon;
`
`FURTHER ORDERED that Apple in the joined proceeding shall
`designate attorney(s) to present argument at the oral hearing in the joined
`proceeding, if requested and scheduled, in a consolidated argument;
`FURTHER ORDERED that IPR2017-01081 is terminated under
`37 C.F.R. § 42.72 and all further filings in the joined proceedings will be in
`IPR2016-01493;
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2016-01493; and
`FURTHER ORDERED that the case caption in IPR2016-01493 shall
`be changed to reflect joinder of this proceeding in accordance with the
`attached example.
`
`
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`7
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`IPR2017-01081
`Patent 8,457,676 B2
`For PETITIONER:
`Steve Moore
`steve.moore@pillsburylaw.com
`
`Brian Nash
`brian.nash@pillsburylaw.com
`
`Rene Mai
`rene.mai@pillsburylaw.com
`
`
`For PATENT OWNER:
`
`Terry Saad
`tsaad@bcpc-law.com
`
`Nicholas Kliewer
`nkliewer@bcpc-law.com
`
`
`For PETITIONER in IPR2016-01493:
`
`Andrew Ehmke
`andy.ehmke.ipr@haynesboone.com
`
`Scott Jarratt
`scott.jarratt.ipr@haynesboone.com
`
`Clint Wilkins
`clint.wilkins.ipr@haynesboone.com
`
`
`
`
`
`
`8
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`IPR2017-01081
`
`Patent 8,457,676 B2
`Example Case Caption for Joined Proceeding
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., HTC CORPORATION, HTC AMERICA, INC.,
`ZTE CORPORATION, AND ZTE (USA), INC.,
`Petitioner,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner.
`____________
`
`Case IPR2016-014931
`Patent 8,457,676 B2
`____________
`
`
`
`
`
`
`
`
`
`
`
`
`1 HTC Corporation, HTC America, Inc., ZTE Corporation, and ZTE (USA),
`Inc. filed a petition in (now terminated) IPR2017-01081, and have been
`joined to the instant proceeding.
`
`9
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`
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