`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.
`
`