UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD.,
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`Petitioner,
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`v.
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`DANIEL L. FLAMM,
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`Patent Owner.
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`
`Case No. IPR2017-01749
`U.S. Patent No. RE40,264 E
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`
`
`Before CHRISTOPHER L. CRUMBLEY and KIMBERLY McGRAW,
`Administrative Patent Judges
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`
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`INTEL CORPORATION, MICRON TECHNOLOGY, INC., AND
`GLOBALFOUNDRIES U.S., INC.’S PARTIAL OPPOSITION TO
`SAMSUNG ELECTRONICS CO., LTD.’S MOTION FOR JOINDER
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`
`Petitioner,
`
`v.
`
`DANIEL L. FLAMM,
`
`Patent Owner.
`
`
`Case No. IPR2017-01749
`U.S. Patent No. RE40,264 E
`
`
`
`
`Before CHRISTOPHER L. CRUMBLEY and KIMBERLY McGRAW,
`Administrative Patent Judges
`
`
`
`
`
`INTEL CORPORATION, MICRON TECHNOLOGY, INC., AND
`GLOBALFOUNDRIES U.S., INC.’S PARTIAL OPPOSITION TO
`SAMSUNG ELECTRONICS CO., LTD.’S MOTION FOR JOINDER
`
`
`
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`
`
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`
`
`PTAB Case No. IPR2017-01749, Patent No. RE40,264 E
`Intel, Micron, and Global’s Partial Opposition to Motion for Joinder
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`TABLE OF CONTENTS
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`Page
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`I.
`INTRODUCTION ........................................................................................... 1
`STATEMENT OF MATERIAL FACTS ........................................................ 2
`II.
`III. ARGUMENT ................................................................................................... 3
`IV. CONCLUSION ................................................................................................ 5
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`i
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`PTAB Case No. IPR2017-01749, Patent No. RE40,264 E
`Intel, Micron, and Global’s Partial Opposition to Motion for Joinder
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`TABLE OF AUTHORITIES
`
`
`Dell, Inc. v. Network-1 Security Solutions, Inc., IPR2013-00385,
`Paper 17 (July 29, 2013) ............................................................................................ 4
`
`HTC Corp. v. Parthenon Unified Memory Architecture LLC.,
`IPR2017-00512, Paper No. 12 (June 1, 2017) ........................................................... 4
`
`ii
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`I.
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`PTAB Case No. IPR2017-01749, Patent No. RE40,264 E
`Intel, Micron, and Global’s Partial Opposition to Motion for Joinder
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`INTRODUCTION
`Samsung Electronics Co., Ltd. (“Samsung”) has moved to join Inter Partes
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`Review No. IPR2017-00279, which the Board instituted based on a Petition jointly
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`filed by Intel Corporation (“Intel”), Micron Technology, Inc. (“Micron”), and
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`GLOBALFOUNDRIES U.S., Inc. (“Global”). Samsung seeks to join IPR2017-
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`00279 as an “understudy,” purportedly with no active role, unless Intel, Micron,
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`and Global withdraw from the trial the Board has instituted. While Intel, Micron
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`and Global do not object to joinder if Samsung is limited to a truly passive role,
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`they do object to the extent Samsung’s terms go beyond such a role.
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`Specifically, Samsung proposes to coordinate on consolidated filings and
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`deposition examination. Because Samsung had the earliest deadline to petition for
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`inter partes review of the ’264 patent, Intel, Micron and Global have carefully
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`avoided such coordination to avoid any appearance of privity with Samsung. If
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`Intel, Micron and Global change course now and begin coordination with
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`Samsung, the Patent Owner may be prompted to litigate privity, an issue that has
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`no bearing on the current record. Thus, unless Patent Owner waives the issue or
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`the Board rules that coordinating with Samsung, if joined, will not justify raising a
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`privity challenge, Intel, Micron and Global should not be required to coordinate
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`with Samsung in the manner the motion suggests. Moreover, given that three
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`1
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`PTAB Case No. IPR2017-01749, Patent No. RE40,264 E
`Intel, Micron, and Global’s Partial Opposition to Motion for Joinder
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`petitioners (Intel, Micron and Global) already are coordinating in IPR2017-00279,
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`adding a fourth would create additional and unnecessary work.
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`In short, if Samsung is permitted to join, it should be limited to a purely
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`passive role and should not file any papers, participate in discovery, present oral
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`argument or otherwise actively participate unless Intel, Micron and Global
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`withdraw. Alternatively, if the Board is inclined to permit Samsung to join on the
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`terms set out in the motion, Intel, Micron and Global respectfully request an
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`opportunity to speak with the Board about how to make clear that any required
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`coordination with Samsung will not give rise to an allegation of privity further
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`unnecessarily burdening the Board, the courts, and the parties.
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`STATEMENT OF MATERIAL FACTS
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`II.
`1. Patent Owner sued Samsung for alleged infringement of the ’264 patent in
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`July 2015 (the “Samsung Case”). Flamm v. Samsung Elec. Co., Ltd., No. 1:15-cv-
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`613-LY (W.D. Tex.).
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`2. Patent Owner did not sue Intel, Micron and Global for alleged infringement
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`of the ’264 patent until January 2016, approximately six months after filing the
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`Samsung Case. Lam Research Corp. v. Flamm, No. 5:15-cv-01277-BLF, Dkts. 50,
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`58, 60 & 61 (N.D. Cal.).
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`3. In order to avoid any question regarding privity or the applicability of
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`Samsung’s earlier bar date under 35 U.S.C. § 315(a), Intel, Micron and Global
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`2
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`PTAB Case No. IPR2017-01749, Patent No. RE40,264 E
`Intel, Micron, and Global’s Partial Opposition to Motion for Joinder
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`have not coordinated or worked with Samsung regarding any IPR proceedings
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`relating to patents asserted by Flamm.
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`4. Intel, Micron and Global filed IPR2017-00279 on December 2, 2016, which
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`was instituted by the Board on June 13, 2017.
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`5. On July 10, 2017, Samsung filed IPR2017-01749 and a Motion for Joinder
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`with IPR2017-00279. In that motion, Samsung stated, “Samsung will act as an
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`‘understudy’ and will not assume an active role unless the current petitioners cease
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`to participate [in] the instituted IPR. Accordingly, the proposed joinder will neither
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`unduly complicate the Intel IPR nor delay its schedule.” IPR2017-01749, Paper
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`No. 3 at p. 1. Samsung’s Motion for Joinder further proposes that Samsung would
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`be permitted: (a) filings that are “consolidated with the filings of the current
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`petitioners, unless a filing concerns issues solely involving Samsung”; and (b)
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`deposition examination time as “permitted under either 37 C.F.R. § 42.53 or any
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`agreement between Patent Owner and the current petitioners. IPR2017-01749,
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`Paper No. 3 at p. 7.
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`III. ARGUMENT
`Intel, Micron and Global do not object to joinder if Samsung is limited to a
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`truly passive role, but they do object to the extent Samsung’s terms go beyond a
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`truly passive role or would prompt Patent Owner to attempt to raise a privity
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`challenge based on any required coordination. As framed, Samsung’s motion
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`3
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`
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`PTAB Case No. IPR2017-01749, Patent No. RE40,264 E
`Intel, Micron, and Global’s Partial Opposition to Motion for Joinder
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`appears to require coordination with Intel, Micron, and Global. For example,
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`Samsung’s motion seeks to have “all filings by Samsung in the joined proceeding
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`[] consolidated with the filings of the current petitioners, unless a filing concerns
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`issues solely involving Samsung.” IPR2017-01749, Paper No. 3 at p. 7. Similarly,
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`the motion seeks at least some deposition examination time. Id.
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`As long as any of Intel, Micron, and Global remain active, Samsung should
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`not be participating in filings or discovery in IPR2017-00279. See Dell, Inc. v.
`
`Network-1 Sec. Sols., Inc., IPR2013-00385, Paper 17 (July 29, 2013) (permitting
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`joinder but requiring permission from the Board to participate in filing, discovery
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`or oral argument); HTC Corp. v. Parthenon Unified Memory Architecture LLC.,
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`IPR2017-00512, Paper No. 12 at p. 8 (June 1, 2017) (“HTC’s participation in the
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`briefing, depositions, and oral argument of these proceedings shall be subject to
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`Apple’s acquiescence to HTC’s participation . . . .”). Permitting Samsung to take
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`an active role in IPR2017-00279 would create additional and unnecessary work for
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`Intel, Micron, and Global by increasing the complexity and cost to a proceeding
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`that already requires coordination among three petitioners.
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`Moreover, due to Samsung’s earlier bar date, Intel, Micron and Global have
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`taken great care not to coordinate or work with Samsung on any of the IPRs
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`addressing the ’264 patent to avoid any argument by Patent Owner regarding
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`privity. They should not be forced to do so now in the absence of either: (i) a
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`4
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`PTAB Case No. IPR2017-01749, Patent No. RE40,264 E
`Intel, Micron, and Global’s Partial Opposition to Motion for Joinder
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`ruling by the Board that doing so will not allow Patent Owner to raise a privity
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`challenge or, (ii) Patent Owner’s waiver of the bar date issue. While Intel, Micron,
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`and Global do not agree that joinder under Samsung’s terms should result in a
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`privity finding, they should not be subjected to unnecessary litigation and
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`discovery expense if Flamm were permitted to raise a privity challenge based on
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`any coordination required because of joinder by Samsung.
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`IV. CONCLUSION
`For the reasons described herein, Intel, Micron and Global do not object to
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`joinder if Samsung is limited to a truly passive role, but they do object to the extent
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`Samsung’s terms go beyond a truly passive role or would allow Patent Owner to
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`raise a privity challenge. As such, if the Board grants Samsung’s joinder motion,
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`Intel, Micron and Global respectfully request that the Board make clear that
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`Samsung’s role will be purely passive unless Intel, Micron and Global all
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`withdraw, and that they need not coordinate with Samsung. Alternatively, in the
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`event the Board permits Samsung’s joinder on the terms proposed in the motion,
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`Intel, Micron and Global respectfully request an opportunity to speak with the
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`Board about how to make clear that Patent Owner will not be permitted to use
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`Samsung’s joinder as a basis for a privity challenge.
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`Dated: August 10, 2017
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`Respectfully submitted,
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`
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`
`
`/Jonathan McFarland/ (Reg. No. 61,109)
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`5
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`PTAB Case No. IPR2017-01749, Patent No. RE40,264 E
`Intel, Micron, and Global’s Partial Opposition to Motion for Joinder
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`
`PERKINS COIE LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101
`206-359-8000
`
`WEIL, GOTSHAL & MANGES LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`650-802-3237
`
`WHITE & CASE LLP
`701 Thirteenth Street, NW
`Washington, DC 20005-3807
`202-626-3600
`
`Lead Counsel
`Jonathan McFarland, Reg. No. 61,109
`
`Back-up Counsel
`Chad Campbell, Pro Hac Vice
`Tyler Bowen, Reg. No. 60,461
`Daniel Keese, Reg. No. 69,315
`J. Jason Lang, Reg. No. 73,604
`Jared Bobrow, Pro Hac Vice
`David M. Tennant, Reg. No. 48,362
`Nathan Zhang, Reg. No. 71,401
`
`Attorneys for Petitioners
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`6
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`PTAB Case No. IPR2017-01749, Patent No. RE40,264 E
`Intel, Micron, and Global’s Partial Opposition to Motion for Joinder
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true copy of the foregoing
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`PETITIONERS RESPONSE TO MOTION FOR JOINDER FILED BY THIRD
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`PARTY SAMSUNG ELECTRONICS CO. LTD has been served in its entirety this
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`10th day of August, 2017, by email delivery service to the Board at
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`Trials@uspto.gov:
`
`Date of Service
`
`August 10, 2017
`
`Manner of Service
`
`
`Documents Served
`
`Persons Served
`
`Petitioners Response to Request for Joinder Filed by
`Samsung Electronics Co. LTD.
`PTAB Board
`
`Trials@uspto.gov
`
`Petitioner Samsung's Counsel of Record
`
`Naveen Modi, Joseph E. Palys, Chetan R. Bansal,
`Howard Herr
`PH-Samsung-FlammIPR@paulhastings.com
`Paul Hastings LLP
`875 15th St. N.W.
`Washington, DC, 20005
`
`Patent Owner’s Counsel of Record
`
`Christopher Frerking
`chris@ntknet.com
`174 Rumford Street
`Concord, New Hampshire 03301
`
`
`
`1
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`
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`PTAB Case No. IPR2017-01749, Patent No. RE40,264 E
`Intel, Micron, and Global’s Partial Opposition to Motion for Joinder
`
`Date of Service
`
`August 10, 2017
`
`Rolf Stadheim
`Stadheim@StadheimGrear.com
`STADHEIM & GREAR, LTD.
`7689 E. Paradise Ln, Suite 2
`Scottsdale, AZ 85260
`
`Respectfully submitted,
`
` /Jonathan McFarland/
`Lead Counsel
`Jonathan McFarland, Reg. No. 61,109
`
`Back-up Counsel
`Chad Campbell, Pro Hac Vice
`Tyler Bowen, Reg. No. 60,461
`Daniel Keese, Reg. No. 69,315
`J. Jason Lang, Reg. No. 73,604
`Jared Bobrow, Pro Hac Vice
`David M. Tennant, Reg. No. 48,362
`Nathan Zhang, Reg. No. 71,401
`
`Attorneys for Petitioners
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`
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`Dated: August 10, 2017
`
`
`PERKINS COIE LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101
`206-359-8000
`
`WEIL, GOTSHAL & MANGES LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`650-802-3237
`
`WHITE & CASE LLP
`701 Thirteenth Street, NW
`Washington, DC 20005-3807
`202-626-3600
`
`
`
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`2
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