Trials@uspto.gov Paper 13
`571-272-7822 Entered: October 3, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`SEVEN NETWORKS, LLC,
`Patent Owner.
`_______________
`
`IPR2018-01106 (Patent 9,516,127) IPR2018-01108 (Patent 9,516,127)
`IPR2018-01113 (Patent 8,811,952) IPR2018-01114 (Patent 8,811,952)
`IPR2018-01120 (Patent 9,247,019) IPR2018-01122 (Patent 9,325,600)
`IPR2018-01124 (Patent 9,351,254) IPR2018-01125 (Patent 9,351,254)
` IPR2018-01126 (Patent 9,516,129) IPR2018-01127 (Patent 9,553,816)1
`____________
`
`
`Before THU A. DANG, KARL D. EASTHOM, JONI Y. CHANG,
`THOMAS L. GIANNETTI, ROBERT J. WEINSCHENK, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.2
`
`CHANG, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 This Order applies to each of the above-listed proceedings. We exercise
`our discretion to issue one Order to be filed in each proceeding. The parties
`are not authorized to use this heading style in any subsequent papers.
`2 This is not an expanded panel of the Board. It is a listing of all the Judges
`on the panels of the above-listed proceedings.
`
`
`571-272-7822 Entered: October 3, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`SEVEN NETWORKS, LLC,
`Patent Owner.
`_______________
`
`IPR2018-01106 (Patent 9,516,127) IPR2018-01108 (Patent 9,516,127)
`IPR2018-01113 (Patent 8,811,952) IPR2018-01114 (Patent 8,811,952)
`IPR2018-01120 (Patent 9,247,019) IPR2018-01122 (Patent 9,325,600)
`IPR2018-01124 (Patent 9,351,254) IPR2018-01125 (Patent 9,351,254)
` IPR2018-01126 (Patent 9,516,129) IPR2018-01127 (Patent 9,553,816)1
`____________
`
`
`Before THU A. DANG, KARL D. EASTHOM, JONI Y. CHANG,
`THOMAS L. GIANNETTI, ROBERT J. WEINSCHENK, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.2
`
`CHANG, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 This Order applies to each of the above-listed proceedings. We exercise
`our discretion to issue one Order to be filed in each proceeding. The parties
`are not authorized to use this heading style in any subsequent papers.
`2 This is not an expanded panel of the Board. It is a listing of all the Judges
`on the panels of the above-listed proceedings.
`
`
`
`IPR2018-01106 (Patent 9,516,127) IPR2018-01108 (Patent 9,516,127)
`IPR2018-01113 (Patent 8,811,952) IPR2018-01114 (Patent 8,811,952)
`IPR2018-01120 (Patent 9,247,019) IPR2018-01122 (Patent 9,325,600)
`IPR2018-01124 (Patent 9,351,254) IPR2018-01125 (Patent 9,351,254)
`IPR2018-01126 (Patent 9,516,129) IPR2018-01127 (Patent 9,553,816)
`
`
`The Board received three emails from Petitioner (“Samsung”) and
`Patent Owner (“SEVEN Networks”), requesting a conference call with the
`panels. Ex. 3002.3 The email sent on October 1, 2018, indicates that
`“[a]fter meeting and conferring with counsel for Patent Owner (SEVEN
`Networks) on Friday, September 28 and Monday, October 1, counsel for
`Petitioner (Samsung) wishes to address [five] topics on the conference call
`with the Board that [the parties] requested in [the] September 28 e-mail.” Id.
`In this Order, we address below each of these five items listed in the
`October 1, 2018 email in turn. Therefore, a conference call with the Board
`at this time is not necessary.
`As to Item #1, Samsung’s request to seal Exhibit 3001 is improper.
`Id. Exhibit 3001 includes an email and an attachment that were sent to the
`Board on August 13, 2018. Ex. 3001. Neither the email nor the attachment
`indicates that it contains confidential material. Id. Moreover, the Board’s
`trial rules do not permit submission of confidential material via email to the
`Board. Notably, 37 C.F.R. § 42.14 provides that “[t]he record of a
`proceeding, including documents and things, shall be made available to the
`public, except as otherwise ordered,” and that “[a] party intending a
`document or thing to be sealed shall file a motion to seal concurrent with the
`filing of the document or thing to be sealed.” See also 35 U.S.C. § 316(a)(1)
`(“The Director shall prescribe regulations . . . providing that the file of any
`proceeding under this chapter shall be made available to the public, except
`
`
`3 We cite to the record in IPR2018-01106, unless otherwise noted.
`
`2
`
`
`
`IPR2018-01106 (Patent 9,516,127) IPR2018-01108 (Patent 9,516,127)
`IPR2018-01113 (Patent 8,811,952) IPR2018-01114 (Patent 8,811,952)
`IPR2018-01120 (Patent 9,247,019) IPR2018-01122 (Patent 9,325,600)
`IPR2018-01124 (Patent 9,351,254) IPR2018-01125 (Patent 9,351,254)
`IPR2018-01126 (Patent 9,516,129) IPR2018-01127 (Patent 9,553,816)
`
`that any petition or document filed with the intent that it be sealed shall, if
`accompanied by a motion to seal, be treated as sealed during the outcome of
`the ruling on the motion.”).
`In any event, for efficiency, we treat Samsung’s request to seal
`Exhibit 3001 as a request for authorization to file a motion to seal, and grant
`Samsung leave to file a motion to seal, along with a jointly proposed
`protective order (such as the default protective order set forth in the Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, Appendix B (Aug. 14,
`2012)) and a redacted version of Exhibit 3001 that is available to the public,
`within five business days of this Order, in each proceeding at issue.
`The motion to seal should provide specific and sufficient reasons why
`the information should be maintained under seal, why the information was
`emailed to the Board without any indication that the information includes
`confidential material, and why Samsung failed to notify the Board
`immediately after Exhibit 3001 was entered into the records on September
`18, 2018. For further guidance, the parties are directed to Argentum Pharm.
`LLC v. Alcon Research, Ltd., Case IPR2017-01053 (PTAB Jan. 19, 2018)
`(Paper 27) (informative).
`As a precaution, the availability status of Exhibit 3001 has been
`changed to “parties and Board only” temporarily. The availability status
`will be changed back to “public” if Samsung fails to timely file a motion to
`seal.
`
`As to Item #2, the October 1, 2018 email indicates that Samsung’s
`request for authorization to file a ten-page brief, to address real party in
`
`3
`
`
`
`IPR2018-01106 (Patent 9,516,127) IPR2018-01108 (Patent 9,516,127)
`IPR2018-01113 (Patent 8,811,952) IPR2018-01114 (Patent 8,811,952)
`IPR2018-01120 (Patent 9,247,019) IPR2018-01122 (Patent 9,325,600)
`IPR2018-01124 (Patent 9,351,254) IPR2018-01125 (Patent 9,351,254)
`IPR2018-01126 (Patent 9,516,129) IPR2018-01127 (Patent 9,553,816)
`
`interest and privity issues raised by SEVEN Networks in its Preliminary
`Response is not opposed by SEVEN Networks. As to Item #3, the email
`indicates that SEVEN Networks’ request for authorization to file a six-page
`reply brief is not opposed by Samsung. We believe additional briefing on
`these issues would be helpful to resolve the parties’ dispute. As such, the
`parties’ requests are granted.
`As to Item #4, SEVEN Networks’ request to file certain documents
`into the cases4 filed by Google LLC (“Google”) is an improper ex parte
`communication because counsel for Google, who is the Petitioner in those
`cases, was not included or copied in the email. Moreover, there is no
`indication that SEVEN Networks has conferred with Google. Accordingly,
`SEVEN Networks’ request to enter documents into Google’s cases is denied.
`As to Item #5, Samsung’s request for authorization to file a reply to
`SEVEN Networks’ Preliminary Responses in Cases IPR2018-01106,
`IPR2018-01108, IPR2018-01124, and IPR2018-01125 to address arguments
`regarding claim construction and the Board’s discretion under § 325(d) is
`denied, as Samsung could have foreseen these arguments and addressed
`them in its Petitions.
`Lastly, the Board reminds the parties to observe the Board’s statutory
`and regulatory requirements carefully to avoid improper requests. Improper
`
`
`4 Cases IPR2018-01047, IPR2018-01048, IPR2018-01049, IPR2018-01050,
`IPR2018-01051, IPR2018-01052, IPR2018-01094, IPR2018-01095,
`IPR2018-01101, IPR2018-01102, IPR2018-01103, IPR2018-01104,
`IPR2018-01115, IPR2018-01116, IPR2018-01117, and IPR2018-01118
`(“Google’s cases”).
`
`4
`
`
`
`IPR2018-01106 (Patent 9,516,127) IPR2018-01108 (Patent 9,516,127)
`IPR2018-01113 (Patent 8,811,952) IPR2018-01114 (Patent 8,811,952)
`IPR2018-01120 (Patent 9,247,019) IPR2018-01122 (Patent 9,325,600)
`IPR2018-01124 (Patent 9,351,254) IPR2018-01125 (Patent 9,351,254)
`IPR2018-01126 (Patent 9,516,129) IPR2018-01127 (Patent 9,553,816)
`
`requests cause unnecessary delays, costs, and burden on the Board, which
`frustrate the Board’s statutory and regulatory goals (see 35 U.S.C. § 316(b)
`and 37 C.F.R. § 42.1(b)), and the Board’s ability to timely meet its statutory
`obligations (see 35 U.S.C. § 314(b)). See also 37 C.F.R. § 42.12.
`ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that, within five business days of this Order, Samsung is
`authorized to file a motion to seal Exhibit 3001 as noted above, along with a
`jointly proposed protective order, and a redacted version of Exhibit 3001
`that is available to the public;
`FURTHER ORDERED that, although the availability status of
`Exhibit 3001 has been changed to “parties and Board only” temporarily, the
`availability status will be changed back to “public” if Samsung fails to
`timely file a motion to seal in compliance with this Order;
`FURTHER ORDERED that Samsung is authorized to file a ten-page
`brief by October 12, 2018, to address real party in interest and privity issues
`raised by SEVEN Networks in its Preliminary Response;
`FURTHER ORDERED that SEVEN Networks is authorized to file a
`six-page reply brief by October 19, 2018;
`FURTHER ORDERED that SEVEN Networks’ request for
`authorization to file certain documents into Google’s cases is denied; and
`FURTHER ORDERED that Samsung’s request for authorization to file a
`reply in Cases IPR2018-01106, IPR2018-01108, IPR2018-01124, and
`
`5
`
`
`
`IPR2018-01106 (Patent 9,516,127) IPR2018-01108 (Patent 9,516,127)
`IPR2018-01113 (Patent 8,811,952) IPR2018-01114 (Patent 8,811,952)
`IPR2018-01120 (Patent 9,247,019) IPR2018-01122 (Patent 9,325,600)
`IPR2018-01124 (Patent 9,351,254) IPR2018-01125 (Patent 9,351,254)
`IPR2018-01126 (Patent 9,516,129) IPR2018-01127 (Patent 9,553,816)
`
`IPR2018-01125 to arguments regarding claim construction and the Board’s
`discretion under § 325(d) is denied.
`
`
`PETITIONER:
`
`W. Karl Renner
`Jeremy Monaldo
`Roberto Devoto
`Kim Leung
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`jjm@fr.com
`devoto@fr.com
`leung@fr.com
`
`
`PATENT OWNER:
`
`Kenneth J. Weatherwax
`Edward Hsieh
`Parham Hendifar
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`hsieh@lowensteinweatherwax.com
`hendifar@lowensteinweatherwax.com
`
`Sangeeta G. Shah
`David S. Bir
`Richard J. Cantor
`BROOKS KUSHMAN P.C.
`sshah@brookskushman.com
`dbir@brookskushman.com
`rjcantor@brookskushman.com
`
`6
`
`
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