Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 7
` Entered: October 16, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`OLYMPUS CORPORATION, OLYMPUS AMERICA INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`_______________
`
`Case IPR2017-01682
`Patent 6,470,399 B1
`_______________
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. §§ 42.108 and 42.122(b)
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 7
` Entered: October 16, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`OLYMPUS CORPORATION, OLYMPUS AMERICA INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`_______________
`
`Case IPR2017-01682
`Patent 6,470,399 B1
`_______________
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. §§ 42.108 and 42.122(b)
`
`
`
`IPR2017-01682
`Patent 6,470,399 B1
`
`I.
`
`INTRODUCTION
`
`Olympus Corporation and Olympus America Inc. (collectively,
`“Petitioner”) filed a Petition requesting an inter partes review of claims 1–8,
`10, 11, and 13−15 of U.S. Patent No. 6,470,399 B1 (“the ’399 patent”).
`Paper 2 (“Pet.”). Petitioner also concurrently filed a Motion for Joinder,
`seeking to join this proceeding with LG Electronics, Inc. and ZTE (USA)
`Inc., v. Papst Licensing GmbH & Co., KG, Case IPR2017-00443 (“the LG
`IPR”). Paper 3 (“Mot.”). Patent Owner did not file a Preliminary Response;
`nor does it oppose Petitioner’s Motion for Joinder.
`For the reasons set forth below, we institute an inter partes review of
`claims 1–8, 10, 11, and 13−15 of the ’399 patent, and grant Petitioner’s
`Motion for Joinder.
`
`II.
`
`INSTITUTION OF INTER PARTES REVIEW
`
`On June 12, 2017, we instituted a trial in IPR2017-00443 based on the
`following grounds of unpatentability (the LG IPR, slip op. at 22 (PTAB June
`12, 2017) (Paper 7)):
`
`Challenged Claim(s)
`
`Basis
`
`References
`
`1–4, 6–8, 11, and 13–15
`
`5
`
`10
`
`§ 103(a) Murata, Schmidt, and Lin
`§ 103(a) Murata, Schmidt, Lin, and
`Microsoft Dictionary
`§ 103(a) Murata, Schmidt, Lin, and Beretta
`
`The instant Petition presents the same grounds of unpatentability, the
`same prior art, and the same declarant testimony as the petition in the LG
`IPR. Pet. 8−9; Mot. 5–6. In view of the identity of the grounds in the
`
`
`
`2
`
`
`
`IPR2017-01682
`Patent 6,470,399 B1
`
`instant Petition and in the LG IPR petition, and, for the same reasons stated
`in our Decision on Institution in the LG IPR, we institute inter partes review
`in this proceeding on the same grounds discussed above and for the same
`claims we instituted inter partes review in the LG 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
`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 LG
`IPR. Mot. 6. Patent Owner did not file any opposition to Petitioner’s
`Motion for Joinder. We find that the Motion for Joinder is timely.
`
`
`
`3
`
`
`
`IPR2017-01682
`Patent 6,470,399 B1
`
`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 LG IPR. Mot. 6−7. The evidence also is identical, including the reliance
`on the same Declaration of Kevin C. Almeroth, 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 panel 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.
`
`IV. ORDER
`
`In view of the foregoing, it is
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted for the following grounds of unpatentability:
`
`Challenged Claim(s)
`
`Basis
`
`References
`
`1–4, 6–8, 11, and 13–15
`
`5
`
`10
`
`
`
`§ 103(a) Murata, Schmidt, and Lin
`§ 103(a) Murata, Schmidt, Lin, and
`Microsoft Dictionary
`§ 103(a) Murata, Schmidt, Lin, and Beretta
`
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2017-00443 is granted;
`
`
`
`4
`
`
`
`IPR2017-01682
`Patent 6,470,399 B1
`
`
`FURTHER ORDERED that the ground on which trial in
`IPR2017-00443 was instituted is unchanged, and no other grounds are
`included in the joined proceeding;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2017-00443 (Paper 8) and schedule changes agreed-to by the parties in
`IPR2017-00443 (pursuant to the Scheduling Order) shall govern the
`schedule of the joined proceeding;
`FURTHER ORDERED that, throughout the joined proceeding, all
`filings in IPR2017-00443 will be consolidated, and no filing by Petitioner
`Olympus alone will be considered without prior authorization by the Board;
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2017-00443;
`FURTHER ORDERED that IPR2017-01682 is terminated under
`37 C.F.R. § 42.72 and all further filings in the joined proceeding are to be
`made in IPR2017-00443; and
`FURTHER ORDERED that the case caption in IPR2017-00443 shall
`be changed to reflect joinder with this proceeding in accordance with the
`attached example.
`
`
`
`
`
`
`
`
`
`5
`
`
`
`IPR2017-01682
`Patent 6,470,399 B1
`
`For PETITIONER:
`
`Dion Bregman
`Andrew Devkar
`Ahren Hsu-Hoffman
`Ehsun Forghany
`MORGAN, LEWIS & BOCKKIUS LLP
`dian.bregman@morganlewis.com
`andrew.devkar@morganlewis.com
`ahren.hsu-hoffman@morganlewis.com
`ehsun.forghany@morganlewis.com
`
`PATENT OWNER:
`
`Gregory Donahue
`DiNOVO PRICE ELLWANGER & HARDY LLP
`gdonahue@dpelaw.com
`docketing@dpelaw.com
`
`Anthony Meola
`Jason Murphy
`Victor Baranowski
`Arlen Olsen
`SCHMEISER, OLSEN & WATTS, LLP
`ameola@iplawusa.com
`jmurphy@iplawusa.com
`vbaranowski@iplawusa.com
`aolsen@iplawusa.com
`
`
`
`
`
`
`6
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 7
` Entered: October 16, 2017
`
`Example Case Caption for Joined Proceeding
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LG ELECTRONICS, INC., ZTE CORPORATION,
`OLYMPUS CORPORATION, and OLYMPUS AMERICA INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`_______________
`
`Case IPR2017-004431
`Patent 6,470,399 B1
`_______________
`
`
`
`1 Case IPR2017-01682 has been joined with this proceeding.
`
`
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