Trials@uspto.gov
`571.272.7822
`
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`
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`Paper No. 10
`Filed: October 4, 2017
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE CORPORATION AND ZTE (USA), INC.,
`Petitioner,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner.
`
`
`
`Case IPR2017-01079
`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 IPR2016-01501
`37 C.F.R. §§ 42.108, 42.122(b)
`
`
`
`
`
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`Paper No. 10
`Filed: October 4, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE CORPORATION AND ZTE (USA), INC.,
`Petitioner,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner.
`
`
`
`Case IPR2017-01079
`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 IPR2016-01501
`37 C.F.R. §§ 42.108, 42.122(b)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-01079
`Patent 8,457,676 B2
`
`I.
`
`INTRODUCTION
`
`
`
`
`
`Petitioner, ZTE Corporation and ZTE (USA), Inc. (collectively,
`
`“ZTE”), filed a Petition (“Pet.”) on March 13, 2017 (Paper 1) requesting
`
`inter partes review of claims 1, 19, and 33 of U.S. Patent No. 8,457,676 B2
`
`(“the ’676 patent,” Ex. 1001). Pet. 1. Along with the Petition, ZTE filed a
`
`Motion for Joinder (“Motion,” Paper 3) with Case IPR2016-01501, HTC
`
`Corporation and HTC America, Inc. v. Cellular Communications Equipment
`
`LLC (“’1501 IPR”), a pending inter partes review involving the ’676 patent.
`
`Paper 3, 1. Cellular Communications Equipment LLC is Patent Owner.
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`Patent Owner filed a Preliminary Response (“Prelim. Resp.,” Paper 9)
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`and an Opposition to Motion for Joinder (“Opp.,” Paper 7). Patent Owner
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`opposes ZTE’s Motion. Prelim. Resp. 1–11. For the reasons described
`
`below, we institute an inter partes review of all the challenged claims and
`
`grant ZTE’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 ’1501 IPR on the following ground:
`
`whether claims 1, 19, and 33 were unpatentable over U.S. Patent Application
`
`Publication No. 2006/0140154 to Kwak (“Kwak”) under 35 U.S.C. § 103(a).
`
`’1501 IPR, slip. op. at 4–5, 18–19 (PTAB February 13, 2017) (Paper 7)
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`(“’1501 DI”). The instant Petition asserts the same grounds as that on which
`
`the Board instituted review in the ’1501 IPR. Compare Pet. 9–25, with
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`’1501 DI, 4–5, 20; see also Paper 3, 3 (“The Petition includes a ground that
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`is substantively the same as the sole ground instituted in the HTC [’1501]
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`IPR.”).
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`2
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`IPR2017-01079
`Patent 8,457,676 B2
`
`
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`
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`Patent Owner opposes institution. Prelim. Resp. 1. Patent Owner
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`raises the time bar under 35 U.S.C. § 315(b), which states, in part, “[a]n inter
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`partes review may not be instituted if the petition requesting the proceeding
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`is filed more than 1 year after the date on which the petitioner … is served
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`with a complaint alleging infringement of the patent.” Id. at 4–5. Patent
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`Owner acknowledges “previous Board decisions permitting institution of
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`copy-cat petitions that would otherwise be time-barred when a request for
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`joinder to an instituted trial is filed with the copy-cat petition.” Opp. 3.
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`Patent Owner first attempts to distinguish “filing a petition” from a
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`“request for joinder” as precluding joinder under 35 U.S.C. § 315(c).
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`Prelim. Resp. 5–9. This argument is unsupported by any precedent and we
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`decline to accept it. Id.
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`Patent Owner next argues
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`[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 . . . .”
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`Id. at 7–8 (emphasis omitted). We also decline to determine that 37 C.F.R.
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`§ 42.122(b), which allows joinder of an otherwise time-barred Petition, is
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`“not a valid regulation,” as Patent Owner argues. Id. We are not persuaded
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`by these arguments and decline to abrogate 37 C.F.R. § 42.122(b) as
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`suggested by Patent Owner and deny institution based on 35 U.S.C.
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`§ 315(b).
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`3
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`IPR2017-01079
`Patent 8,457,676 B2
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`B. Joinder
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`
`
`
`
`An inter partes review may be joined with another inter partes review,
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`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, ZTE bears the burden of proving that it is
`
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
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`should (1) set forth the reasons joinder is appropriate; (2) identify any new
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`grounds of unpatentability asserted in the petition; and (3) explain what
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`impact (if any) joinder would have on the trial schedule for the existing
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`review. Kyocera Corp. v. Softview LLC, Case IPR2013-00004, slip. op. at
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`3–4 (PTAB April 24, 2013) (Paper 15). As noted above, the Petition asserts
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`the same ground and is virtually identical in arguments and evidence to the
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`petition in the ’1501 IPR.
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`ZTE filed its Motion for Joinder on March 13, 2017. Paper 3. The
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`Board instituted inter partes review in the ’1501 IPR on February 13, 2017.
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`’1501 IPR, Paper 7. Accordingly, the filing date of the Motion satisfies the
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`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 . . . no later than
`
`one month after the institution date of any inter partes review for which
`
`joinder is requested”).
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`4
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`IPR2017-01079
`Patent 8,457,676 B2
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`
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`We have reviewed Patent Owner’s arguments (see Opp. 5–11)
`
`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
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`Owner first argues the Motion was not authorized by the Board. Id. at 5.
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`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 ZTE was served with the
`
`complaint in the underlying litigation. Opp. 6–11. 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.
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`Under the current schedule for the ’1501 IPR, several of Petitioner’s
`
`due dates have passed. Most notably, Petitioner’s Reply date, May 12, 2017,
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`has passed. See ’1501 IPR (Scheduling Order, Paper 8). ZTE agreed,
`
`however, to take an understudy role to petitioner HTC Corporation and HTC
`
`America, Inc. (collectively, “HTC”) in the ’1501 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.
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`ZTE also demonstrates sufficiently that joinder will promote
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`efficiency. See id. Absent Board authorization, ZTE will not actively
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`participate in further proceedings. ZTE is not authorized to file any papers
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`for which the due date has passed. HTC et al. will be held to the procedure
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`detailed in the Patent Owner’s Opposition to Petitioner’s Motion for Joinder
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`5
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`IPR2017-01079
`Patent 8,457,676 B2
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`
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`at pages 11, 12, and 13. In sum, ZTE must adopt the prior positions taken
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`by HTC; no additional testimony will be elicited by ZTE from Dr. Williams;
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`HTC is in control of the joined proceeding; ZTE will not make any filings
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`without our approval; and ZTE will not be allotted any time for argument at
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`the November 8, 2017 hearing. Opp. 11–13. Patent Owner’s expert has
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`been deposed. 1501 IPR Ex. 2004 (Williams Deposition Transcript). No
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`further deposition of Patent Owner’s expert is allowed.
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`The Board expects ZTE, HTC, and Patent Owner to meet and confer
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`regarding any disputes between them and to contact the Board only if such
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`matters cannot be resolved.
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`III. CONCLUSION
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`We grant ZTE’s Motion for Joinder because: 1) the challenge in the
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`instant Petition is identical to the ground instituted in ’1501 IPR; 2) joinder
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`will not impact the existing trial schedule in ’1501 IPR; and 3) joinder will
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`promote efficiency. We institute an inter partes review in this proceeding
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`on the same ground as that on which the Board instituted inter partes review
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`in the ’1501 IPR and join this proceeding to ’1501 IPR.
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`IV. ORDER
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`For the reasons given, it is
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`
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`
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`ORDERED that ZTE’s Motion for Joinder is granted;
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`FURTHER ORDERED that IPR2017-01079 is instituted and ZTE are
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`joined with IPR2016-01501;
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`FURTHER ORDERED that the ground on which IPR2016-01501 was
`
`instituted remains unchanged and no other grounds are included in the joined
`
`proceeding;
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`FURTHER ORDERED that the Scheduling Order (Paper 8) in
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`IPR2016-01501 shall govern the schedule of the joined proceeding;
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`6
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`IPR2017-01079
`Patent 8,457,676 B2
`
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`FURTHER ORDERED that, throughout the joined proceeding, Apple
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`shall file all papers as a single consolidated filing;
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`FURTHER ORDERED that ZTE are bound by any discovery
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`agreements between Patent Owner and Apple in IPR2016-01501 and that
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`ZTE shall not seek any discovery beyond that sought by Apple;
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`FURTHER ORDERED that ZTE shall not take an active role in these
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`proceedings without prior authorization of the Board;
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`FURTHER ORDERED that Apple in the joined proceeding shall
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`designate attorney(s) to conduct the cross-examination, redirect, and any
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`other discovery, within the timeframes set forth by the rules in the joined
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`proceeding, including 37 C.F.R. § 42.53(c), or as the parties otherwise agree
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`upon;
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`FURTHER ORDERED that Apple in the joined proceeding shall
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`designate attorney(s) to present argument at the oral hearing in the joined
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`proceeding, if requested and scheduled, in a consolidated argument;
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`FURTHER ORDERED that IPR2017-01079 is terminated under
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`37 C.F.R. § 42.72 and all further filings in the joined proceedings will be in
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`IPR2016-01501;
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`FURTHER ORDERED that a copy of this Decision will be entered
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`into the record of IPR2016-01501; and
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`FURTHER ORDERED that the case caption in IPR2016-01501 shall
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`be changed to reflect joinder of this proceeding in accordance with the
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`attached example.
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`7
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`IPR2017-01079
`Patent 8,457,676 B2
`
`For PETITIONER:
`
`Steven A. Moore
`Brian Nash
`Rene Mai
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`steve.moore@pillsburylaw.com
`brian.nash@pillsburylaw.com
`rene.mai@pillsburylaw.com
`
`
`For PATENT OWNER:
`
`Terry A. Saad
`BRAGALONE CONROY P.C.
`Nicholas C. Kliewer
`tsaad@bcpc-law.com
`nkliewer@bcpc-law.com
`
`
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`8
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