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Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 9
` Entered: October 4, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`OLYMPUS CORPORATION, OLYMPUS AMERICA INC.,
`SAMSUNG ELECTRONICS CO., LTD., AND
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`_______________
`
`Case IPR2017-01808
`Patent 6,470,399 B1
`_______________
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and JAMES B. ARPIN,
`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)
`
`

`

`IPR2017-01808
`Patent 6,470,399 B1
`
`I.
`
`INTRODUCTION
`
`Olympus Corporation, Olympus America Inc., Samsung Electronics
`Co., Ltd., and Samsung Electronics America, Inc. (collectively, “Petitioner”)
`filed a Petition requesting an inter partes review of claims 1–3, 5, 6, 11, 14,
`and 15 of U.S. Patent No. 6,470,399 B1 (“the ’399 patent”). Paper 3
`(“Pet.”). Petitioner also concurrently filed a Motion for Joinder, seeking to
`join this proceeding with ZTE (USA) Inc. and ZTE Corporation, v. Papst
`Licensing GmbH & Co., KG, Case IPR2017-00714 (“the ZTE IPR”).
`Paper 4 (“Mot.”). Patent Owner did not file a Preliminary Response; nor
`does it oppose Petitioner’s Motion for Joinder. Paper 8.
`For the reasons set forth below, we institute an inter partes review of
`claims 1–3, 5, 6, 11, 14, and 15 of the ’399 patent, and grant Petitioner’s
`Motion for Joinder.
`
`II.
`
`INSTITUTION OF INTER PARTES REVIEW
`
`On June 21, 2017, we instituted a trial in IPR2017-00714 based on the
`sole ground that each of claims 1–3, 5, 6, 11, 14, and 15 is unpatentable
`under § 103(a)1 as obvious over Aytac, the SCSI Specification, Lin, and the
`Admitted Prior Art in the ’399 patent. The ZTE IPR, slip op. at 21 (PTAB
`June 21, 2017) (Paper 10). The instant Petition presents the same grounds of
`unpatentability, the same prior art, and the same declarant testimony as the
`petition in the ZTE IPR. Pet. 10; Mot. 5–6. In view of the identity of the
`
`
`1 Because the claims at issue have a filing date prior to March 16, 2013, the
`effective date of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284 (2011) (“AIA”), we apply the pre-AIA version of 35 U.S.C.
`§ 103 in this Decision.
`
`
`
`2
`
`

`

`IPR2017-01808
`Patent 6,470,399 B1
`
`grounds in the instant Petition and in the ZTE IPR petition, and for the same
`reasons stated in our Decision on Institution in the ZTE 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 ZTE 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 ZTE
`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 ZTE IPR. Paper 8. We find that the Motion for Joinder is timely.
`
`
`
`3
`
`

`

`IPR2017-01808
`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 ZTE IPR. Mot. 5−7. The evidence also is identical, including the
`reliance on the same Declaration of Kevin C. Almeroth, Ph.D. Id. at 6.
`
`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 sole ground that each of claims 1–3, 5, 6,
`11, 14, and 15 of the ’399 patent is unpatentable under § 103(a) as obvious
`over Aytac, the SCSI Specification, Lin, and the Admitted Prior Art in the
`’399 patent;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2017-00714 is granted;
`FURTHER ORDERED that the ground on which trial in
`IPR2017-00714 was instituted is unchanged and no other grounds are
`included in the joined proceeding;
`
`
`
`4
`
`

`

`IPR2017-01808
`Patent 6,470,399 B1
`
`
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2017-00714 (Paper 11) and schedule changes agreed-to by the parties in
`IPR2017-00714 (pursuant to the Scheduling Order) shall govern the
`schedule of the joined proceeding;
`FURTHER ORDERED that, throughout the joined proceeding, all
`filings in IPR2017-00714 will be consolidated and no filing by Petitioner
`Olympus and Samsung 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 IPR2017-00714;
`FURTHER ORDERED that IPR2017-01808 is terminated under
`37 C.F.R. § 42.72 and all further filings in the joined proceeding are to be
`made in IPR2017-00714; and
`FURTHER ORDERED that the case caption in IPR2017-00714 shall
`be changed to reflect joinder with this proceeding in accordance with the
`attached example.
`
`
`
`
`
`
`
`
`
`5
`
`

`

`IPR2017-01808
`Patent 6,470,399 B1
`
`For PETITIONER:
`Dion Bregman
`Ahren Hsu-Hoffman
`Dian.bregman@morganlewis.com
`ahren.hsu-hoffman@morganlewis.com
`
`Brian Rupp
`Carrie Beyer
`Nikola Colic
`DRINKER BIDDLE & REATH LLP
`brian.rupp@dbr.com
`carrie.beyer@dbr.com
`nick.colic@dbr.com
`
`
`PATENT OWNER:
`Nicholas T. Peters
`Paul Henkelmann
`Joseph Marinelli
`Anthony Meola
`FITCH, EVEN, TABIN & FLANNERY LLP
`ntpete@fitheven.com
`phenkelmann@fitcheven.com
`jmarinelli@fitcheven.com
`info@themeolafirm.com
`
`
`
`
`
`6
`
`

`

`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 9
` Entered: October 4, 2017
`
`Example Case Caption for Joined Proceeding
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ZTE (USA) INC. and ZTE CORPORATION,
`OLYMPUS CORPORATION, OLYMPUS AMERICA INC.,
`SAMSUNG ELECTRONICS CO., LTD., AND
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`_______________
`
`Case IPR2017-007141
`Patent 6,470,399 B1
`_______________
`
`
`
`1 Case IPR2017-01808 has been joined with this proceeding.
`
`

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