throbber
Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 12
` Entered: May 24, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`_______________
`
`Case IPR2017-00670
`Patent 8,966,144 B2
`_______________
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. §§ 42.108 and 42.122(b)
`
`

`

`IPR2017-00670
`Patent 8,966,144 B2
`
`
`I.
`
`INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 7, 9, 11, 12, 17–21, 23–26, 41, 50, 51, 56–58, 66–76, 78,
`and 79 of U.S. Patent No. 8,966,144 B2 (“the ’144 patent”). Paper 1
`(“Pet.”). Petitioner also concurrently filed a Motion for Joinder, seeking to
`join this proceeding with Canon Inc. et al., v. Papst Licensing GmbH & Co.,
`KG, Case IPR2016-01216 (“the Canon IPR”). Paper 2. Patent Owner did
`not file a Preliminary Response, but filed a Response to Petitioner’s Motion
`for Joinder in which Patent Owner states that it does not oppose Petitioner’s
`Motion for Joinder. Paper 8.
`For the reasons set forth below, we institute an inter partes review of
`claims 7, 9, 11, 12, 17–21, 23–26, 41, 50, 51, 56–58, 66–76, 78, and 79 of
`the ’144 patent, and grant Petitioner’s Motion for Joinder.
`
`II.
`
`INSTITUTION OF INTER PARTES REVIEW
`On December 15, 2016, we instituted a trial in IPR2016-01216 on the
`following asserted grounds of unpatentability:
`
`Challenged Claim(s)
`7, 9, 11, 12, 17–21,
`23–25, 41, 50, 51, 56–
`58, 66–76, 78, and 79
`
`Basis
`
`Reference(s)
`
`§ 103(a) Kawaguchi, Matsumoto, the SCSI
`Specification, and Admitted Prior Art
`
`26
`
`§ 103(a)
`
`57, 68–70, 75, and 76
`
`§ 103(a)
`
`Kawaguchi, Matsumoto, the SCSI
`Specification, and Admitted Prior
`Art, with or without Takahashi
`Kawaguchi, Matsumoto,
`DASM-AD14, the SCSI
`Specification, and Admitted Prior Art
`
`
`
`2
`
`

`

`IPR2017-00670
`Patent 8,966,144 B2
`
`
`Challenged Claim(s)
`
`Basis
`
`Reference(s)
`
`41, 50, 51, 56, 78, and
`79
`
`§ 103(a)
`
`Kawaguchi, Matsumoto, Saito, the
`SCSI Specification, and Admitted
`Prior Art
`
`66
`
`§ 103(a)
`
`Kawaguchi, Matsumoto, Muramatsu,
`the SCSI Specification, and Admitted
`Prior Art
`
`
`Canon IPR, slip. op. at 47–48 (PTAB Dec. 15, 2016) (Paper 12). The instant
`Petition presents the same grounds of unpatentability, the same prior art, and
`the same declarant testimony as the petition in the Canon IPR. Pet. 6−9;
`Mot. 5–6. In view of the identity of the grounds in the instant Petition and in
`the Canon IPR petition, and for the same reasons stated in our Decision on
`Institution in the Canon IPR, we institute inter partes review in this
`proceeding on the same grounds discussed above and for the claims we
`instituted inter partes review in the Canon IPR.
`
`III. GRANT OF MOTION FOR JOINDER
`
`Joinder in inter partes review is subject to the provisions of 35 U.S.C.
`§ 315(c):
`(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 section 313 or the expiration of the time for filing
`such a response, determines warrants the institution of an inter
`parties review under section 314.
`As the moving party, Petitioner bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`
`
`
`3
`
`

`

`IPR2017-00670
`Patent 8,966,144 B2
`
`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. See Frequently Asked Question H5, https://www.uspto.gov/patents-
`application-process/patent-trial-and-appeal-board/ptab-e2e-frequently-
`asked-questions.
`Petitioner asserts it has grounds for standing because, in accordance
`with 35 U.S.C. § 315(c), Petitioner filed a Motion for Joinder concurrently
`with the Petition and not later than one month after institution of the Canon
`IPR. Mot. 5. Patent Owner does not oppose Petitioner’s Motion for Joinder
`based on the condition that the instant proceeding follows the same schedule
`of the Canon IPR. Paper 8. We find that the Motion for Joinder is timely.
`
`We also find that Petitioner has met its burden of showing that joinder
`is appropriate. The Petition here is substantively identical to the petition in
`the Canon IPR. Mot. 5−7. The evidence also is identical, including the
`reliance on the same Declaration of Paul F. Reynolds, Ph.D. Id. at 7.
`
`Petitioner further has shown that the trial schedule will not be affected
`by joinder. Mot. 6−7. No changes in the schedule are anticipated or
`necessary, and the limited participation, if at all, of Petitioner will not impact
`the timeline of the ongoing trial. We limit Petitioner’s participation in the
`joined proceeding such that Petitioner shall require prior authorization from
`the Board before filing any further paper. This arrangement promotes the
`just and efficient administration of the ongoing trial and the interests of
`Petitioner and Patent Owner.
`
`
`
`4
`
`

`

`IPR2017-00670
`Patent 8,966,144 B2
`
`IV. ORDER
`
`In view of the foregoing, it is
`ORDERED that IPR2017-00670 is hereby instituted on the following
`grounds:
`
`Challenged Claim(s)
`7, 9, 11, 12, 17–21,
`23–25, 41, 50, 51, 56–
`58, 66–76, 78, and 79
`
`Basis
`
`Reference(s)
`
`§ 103(a) Kawaguchi, Matsumoto, the SCSI
`Specification, and Admitted Prior Art
`
`26
`
`§ 103(a)
`
`57, 68–70, 75, and 76
`
`§ 103(a)
`
`41, 50, 51, 56, 78, and
`79
`
`§ 103(a)
`
`Kawaguchi, Matsumoto, the SCSI
`Specification, and Admitted Prior
`Art, with or without Takahashi
`Kawaguchi, Matsumoto,
`DASM-AD14, the SCSI
`Specification, and Admitted Prior Art
`
`Kawaguchi, Matsumoto, Saito, the
`SCSI Specification, and Admitted
`Prior Art
`
`66
`
`§ 103(a)
`
`Kawaguchi, Matsumoto, Muramatsu,
`the SCSI Specification, and Admitted
`Prior Art
`
`
`
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2016-01216 is granted;
`FURTHER ORDERED that the grounds on which trial in
`IPR2016-01216 were instituted are unchanged and no other grounds are
`included in the joined proceeding;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2016-01216 (Paper 13) and schedule changes agreed-to by the parties in
`
`
`
`5
`
`

`

`IPR2017-00670
`Patent 8,966,144 B2
`
`IPR2016-01216 (pursuant to the Scheduling Order) shall govern the
`schedule of the joined proceeding;
`FURTHER ORDERED that, throughout the joined proceeding, all
`filings in IPR2016-01216 will be consolidated and no filing by Petitioner
`Apple alone will be allowed without prior authorization by the Board;
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2016-01216;
`FURTHER ORDERED that IPR2017-00670 is terminated under
`37 C.F.R. § 42.72 and all further filings in the joined proceeding are to be
`made in IPR2016-01216; and
`FURTHER ORDERED that the case caption in IPR2016-01216 shall
`be changed to reflect joinder with this proceeding in accordance with the
`attached example.
`
`
`
`For PETITIONER:
`
`Lori A. Gordon
`Steven W. Peters
`STERNE, KESSLER, GOLDSTEIN & FOX
`lgordon-ptab@skgf.com
`speters-ptab@skgf.com
`
`For PATENT OWNER:
`
`Nicholas T. Peters
`Paul Henkelmann
`FITCH, EVEN, TABIN & FLANNERY LLP
`ntpete@fitcheven.com
`phenkelmann@fitcheven.com
`
`
`
`6
`
`

`

`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 12
` Entered: May 24, 2017
`
`
`
`
`
`
`
`Example Case Caption for Joined Proceeding
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CANON INC., CANON U.S.A., INC.,
`CANON FINANCIAL SERVICES, INC., FUJIFILM CORPORATION,
`FUJIFILM HOLDINGS AMERICA CORPORATION,
`FUJIFILM NORTH AMERICA CORPORATION, JVC KENWOOD
`CORPORATION, JVCKENWOOD USA CORPORATION,
`NIKON CORPORATION, NIKON INC., OLYMPUS CORPORATION,
`OLYMPUS AMERICA INC., PANASONIC CORPORATION,
`PANASONIC CORPORATION OF NORTH AMERICA,
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`_______________
`
`Case IPR2016-012161
`Patent 8,966,144 B2
`_______________
`
`
`
`1 Case IPR2017-00670, filed by Apple Inc., has been joined with this
`proceeding.
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket