`571-272-7822
`
`
`
`
`Paper 7
`Date Entered: March 16, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AT&T MOBILITY LLC,
`v.
`
`INTELLECTUAL VENTURES I LLC
`Patent Owner.
`____________
`
`Case IPR2017-00681
`Case IPR2016-01169
`Patent 5,960,032
`____________
`
`
`
`KRISTEN L. DROESCH, BRIAN J. McNAMARA, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`
`INSTITUTION OF INTER PARTES REVIEW AND
`ORDER GRANTING PETITIONER’S MOTION
`FOR JOINDER OF IPR2017-00681 WITH IPR2016-01169
`37 C.F.R. 42.108
`37C.F.R. § 42.122(b)
`
`
`
`
`IPR2017-00681
`IPR2016-01169
`Patent 5,960,032
`
` On January 13, 2017, AT&T Mobility LLC (“AT&T Mobility”) filed
`a Petition for inter partes review (“Pet.”) of U.S. Patent No. 5,960,032 (“the
`’032 Patent). With its Petition, AT&T Mobility filed a Motion for Joinder
`(“Mot.”) with Ericsson Inc. and Telefonaktiebolaget LM Ericsson v.
`Intellectual Ventures I LLC, Case No. IPR2016-01169 (the “Ericsson IPR”).
`The Motion for Joinder states that the Petition asserts the same grounds and
`analytic framework as those asserted in the Ericsson IPR and is substantially
`identical to the petition filed in the Ericsson IPR. Mot. 1. The motion for
`Joinder also states that AT&T Mobility is prepared to move forward under
`the preliminary claim constructions we adopted in the Ericsson IPR.
`The Motion states that AT&T Mobility will work with Ericsson Inc.
`and Telefonaktiebolaget LM Ericsson (“Ericsson”) to submit consolidated
`filings, and will not file separate papers without establishing good cause and
`obtaining our prior authorization. Mot. 7. The Motion for Joinder also
`states that AT&T Mobility will agree to consolidated discovery, such that a
`single attorney will conduct, on behalf of the petitioners in both proceedings,
`the cross-examination of any witness produced by Patent Owner. Id.
`On February 1, 2017, we conducted a teleconference with all the
`involved parties, i.e., AT&T Mobility and Ericsson (petitioners in the
`relevant proceedings) and Intellectual ventures I LLC (“Patent Owner”),
`during which AT&T Mobility agreed to adhere to the schedule in the
`Ericsson IPR and to stipulate to an extension of the date for filing a Patent
`Owner Response, if requested by Patent Owner, in return for Patent Owner’s
`waiver of a Preliminary Response in this proceeding.
`
`
`
`2
`
`
`
`IPR2017-00681
`IPR2016-01169
`Patent 5,960,032
`Both Ericsson and Patent Owner indicated it would not oppose
`Petitioner’s Motion for Joinder. Patent Owner also waived its Preliminary
`Response.
`In consideration of the above it is
`ORDERED that inter partes review is instituted in IPR2017-00681 on
`the same grounds as those in the Ericsson IPR and no other grounds are
`authorized;
`FURTHER ORDERED that IPR2017-00681 is joined to the Ericsson
`IPR, the Scheduling Order in the Ericsson IPR is unchanged and shall be
`applied to the joined proceeding;
`FURTHER ORDERED that for all filings in the joined proceeding,
`AT&T Mobility and Ericsson shall file consolidated papers, and all further
`filings in the joined proceeding shall be made in IPR2016-01169;
`FURTHER ORDERED that all discovery by AT&T Mobility and
`Ericsson shall be consolidated, and cross-examination of any witness
`testimony proffered by Patent Owner shall be conducted by a single attorney
`within the time limits prescribed for a single deposition;
`FURTHER ORDERED that, having joined IPR2017-00681 and
`IPR2016-01169, under 37 C.F.R. § 42.72 IPR2017-00681 is terminated; and
`FURTHER ORDERED that the caption in IPR2016-01169 shall be
`changed to reflect joinder with IPR2017-00681 as shown on the attached
`page.
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2017-00681
`IPR2016-01169
`Patent 5,960,032
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AT&T MOBILITY LLC,
`
`v.
`
`INTELLECTUAL VENTURES I LLC
`Patent Owner.
`____________
`
`Case IPR2016-01169
`Case IPR2017-00681
`Patent 5,960,032
`____________
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2017-00681
`IPR2016-01169
`Patent 5,960,032
`
`PETITIONER
`Jon V. Swenson
`Nicholas A. Schuneman
`Eliot D. Williams
`BAKER BOTTS LLP
`jon.swenson@bakerbotts.com
`nick.schuneman@bakerbotts.com
`eliot.williams@bakerbotts.com
`
`J. Andrew Lowes
`John Russell Emerson
`Clint Wilkins
`Adam C. Fowles
`HAYNES AND BOONE, LLP
`andrew.lowes.ipr@haynesboone.com
`clint.wilkins.ipr@haynesboone.com
`russell.emerson.ipr@haynesboone.com
`adam.fowles.ipr@haynesboone.com
`
`PATENT OWNER
`
`Lori A. Gordon
`Byron L. Pickard
`Steven W. Peters
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`lgordon-PTAB@skgf.com
`bpickard-PTAB@skgf.com
`speters-PTAB@skgf.com
`
`James R. Hietala
`Tim R. Seeley
`INTELLECTUAL VENTURES
`jhietala@intven.com
`tim@intven.com
`
`
`
`
`5
`
`
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