Trials@uspto.gov
`571.272.7822
`
`Paper No. 9
`Entered: November 1, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`KONINKLIJKE KPN N.V.,
`Patent Owner.
`____________
`
`Case IPR2018-01639
`Patent 9,014,667 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`Grant of Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`571.272.7822
`
`Paper No. 9
`Entered: November 1, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`KONINKLIJKE KPN N.V.,
`Patent Owner.
`____________
`
`Case IPR2018-01639
`Patent 9,014,667 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`Grant of Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`IPR2018-01639
`Patent 9,014,667 B2
`
`
`I. INTRODUCTION
`
`HTC America, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`
`requesting inter partes review of claims 31, 33, and 35 of U.S. Patent
`
`No. 9,014,667 B2 (Ex. 1001, “the ’667 patent”). Petitioner additionally filed
`
`a Motion for Joinder (Paper 3, “Joinder Mot.”) seeking to join this
`
`proceeding with LG Electronics, Inc. v. Koninklijke KPN N.V., Case
`
`IPR2018-00558 (“the LGE IPR”), which also concerns the ’667 patent.
`
`Joinder Mot. 1.
`
`In the LGE IPR, we instituted an inter partes review as to claims 31,
`
`33, and 35 of the ’667 patent based on the two grounds of unpatentability
`
`presented. LGE IPR, Paper 6, at 44. According to Petitioner, the instant
`
`Petition is “substantively identical” to the petition in the LGE IPR and
`
`presents the same grounds of unpatentability, the same prior art, and the
`
`same declarant testimony as the petition in the LGE IPR. Joinder Mot. 3–4.
`
`Petitioner also represents that, if it is allowed to join the LGE IPR, it would
`
`agree to consolidated filing with the petitioner in the LGE IPR to “simpl[if]y
`
`briefing and discovery” and “minimize any potential complications or delay
`
`that potentially may result by joinder.” Joinder Mot. 5–7. Petitioner does
`
`not indicate whether the petitioner in the LGE IPR opposes Petitioner’s
`
`Motion for Joinder.
`
`Koninklijke KPN N.V. (“Patent Owner”) did not file a Preliminary
`
`Response; nor did it file a paper opposing Petitioner’s Motion for Joinder.
`
`See Paper 8 (Patent Owner’s Waiver of Preliminary Response).
`
`We have authority to determine whether to institute an inter partes
`
`review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C.
`
`§ 314(a), we may not authorize an inter partes review unless the information
`
`2
`
`
`
`IPR2018-01639
`Patent 9,014,667 B2
`
`in the petition “shows that there is a reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition.” For the reasons that follow, we institute an inter partes review of
`
`claims 31, 33, and 35 of the ’667 patent based on the same grounds
`
`instituted in the LGE IPR. We also grant Petitioner’s Motion for Joinder.
`
`
`
`II.
`
`INSTITUTION OF INTER PARTES REVIEW
`
`On August 3, 2018, we instituted a trial in the LGE IPR based on the
`
`two grounds of unpatentability presented: (1) obviousness under 35 U.S.C.
`
`§ 103 of claims 31 and 33 over Obhan,1 Shatzkamer,2 and Budka;3 and
`
`(2) obviousness under 35 U.S.C. § 103 of claim 35 over Ohban, Taniguchi,4
`
`and Budka. LGE IPR, Paper 6, at 44. As mentioned above, the Petition
`
`filed in this proceeding is essentially the same as the petition filed in the
`
`LGE IPR. Joinder Mot. 3–4; see also Pet. 1; LGE IPR, Paper 2, at 1. In
`
`view of the identity of the grounds in the instant Petition and in the LGE IPR
`
`petition, and for the same reasons stated in our Decision on Institution in the
`
`LGE 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 LGE IPR. See LGE IPR, Paper 6.
`
`
`1 Obhan, U.S. Patent No. 6,275,695 B1, issued Aug. 14, 2001 (LGE IPR,
`Ex. 1005).
`2 Shatzkamer, U.S. Publ’n No. 2008/0220740 A1, published Sept. 11, 2008
`(LGE IPR, Ex. 1006).
`3 Budka, European Publ’n No. EP 1009176 A2, published June 14, 2000
`(LGE IPR, Ex. 1007).
`4 Taniguchi, U.S. Patent No. 7,505,755 B2, issued Mar. 17, 2009 (LGE IPR,
`Ex. 1008).
`
`3
`
`
`
`IPR2018-01639
`Patent 9,014,667 B2
`
`
`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.
`
`“Any request for joinder must be filed, as a motion under § 42.22, 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). Joinder may be
`
`authorized when warranted, but the decision to grant joinder is discretionary.
`
`See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. The Board determines whether
`
`to grant joinder on a case-by-case basis, taking into account the particular
`
`facts of each case, substantive and procedural issues, and other
`
`considerations. See Sony Corp. of Am. v. Network-1 Security Solutions, Inc.,
`
`Case IPR2013-00495, slip op. at 3 (PTAB Sept. 16, 2013) (Paper 13)
`
`(“Sony”). When exercising its discretion, the Board is mindful that patent
`
`trial regulations, including the rules for joinder, must be construed to secure
`
`the just, speedy, and inexpensive resolution of every proceeding. See 35
`
`U.S.C. § 316(b); 37 C.F.R. § 42.1(b).
`
`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
`
`4
`
`
`
`IPR2018-01639
`Patent 9,014,667 B2
`
`review. See Sony at 3; see also Frequently Asked Question H5,
`
`https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-
`
`board/ptab-e2e-frequently-asked-questions. Petitioner should address
`
`specifically how briefing and/or discovery may be simplified to minimize
`
`schedule impact. See Kyocera Corp. v. SoftView LLC, Case IPR2013-
`
`00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15) (representative).
`
`Petitioner’s Motion for Joinder is timely because it was filed on
`
`August 31, 2018, which is within one month of our August 3, 2018,
`
`institution of the LGE IPR. See 37 C.F.R. § 42.122(b); Joinder Mot. 1.
`
`In its Motion for Joinder, Petitioner contends that joinder is
`
`appropriate because the instant Petition “is substantively identical to the
`
`petition in the LG[E] IPR” and “does not present any new grounds of
`
`unpatentability.” Joinder Mot. 3. In particular, Petitioner asserts, the
`
`Petition “challenges the same claims of the same patent, relies on the same
`
`expert declaration, and is based on the same grounds and combinations of
`
`prior art submitted in the LG[E] Petition.” Id. at 4. Petitioner further
`
`contends that “[j]oinder will have minimal impact, if any, on the LG[E] IPR
`
`trial schedule because the [instant] Petition presents no new issues or
`
`grounds of unpatentability.” Id. at 5. Petitioner also “explicitly consents to
`
`the existing trial schedule.” Id. at 5–6.
`
`To “simpl[if]y briefing and discovery,” Petitioner additionally agrees
`
`to assume the role of an “understudy,” bound by the following conditions, if
`
`it is joined to the LGE IPR:
`
`a) all filings by [Petitioner] in the joined proceeding [shall] be
`consolidated with the filings of the current petitioner, unless
`a filing concerns issues solely involving [Petitioner];
`
`5
`
`
`
`IPR2018-01639
`Patent 9,014,667 B2
`
`
`b) [Petitioner] shall not be permitted to raise any new grounds
`not already instituted by the Board in the LG[E] IPR, or
`introduce any argument or discovery not already introduced
`by the current petitioner;
`c) [Petitioner] shall be bound by any agreement between Patent
`Owner and the current petitioner concerning discovery
`and/or depositions; and
`d) [Petitioner] at deposition shall not receive any direct, cross
`examination or redirect time beyond that permitted under
`either 37 C.F.R. § 42.53 or any agreement between Patent
`Owner and the current petitioner.
`
`Id. at 6–7.
`
`Given that Petitioner agrees to consolidated filings and discovery, we
`
`conclude Petitioner has demonstrated that joinder will result in efficiency
`
`and will not unduly complicate or delay the LGE IPR.
`
`Based on all the considerations above, we are persuaded that
`
`Petitioner has met its burden of demonstrating that joinder is warranted
`
`under the circumstances. Accordingly, we grant Petitioner’s Motion for
`
`Joinder. Petitioner will have a limited role in the LGE IPR subject to the
`
`conditions set forth above. If at some point the LGE IPR is terminated with
`
`respect to the original petitioner in the LGE IPR, the roles of the remaining
`
`parties in the proceeding may be reevaluated.
`
`
`
`Accordingly, it is
`
`IV. ORDER
`
`ORDERED that, pursuant to 35 U.S.C. § 314, inter partes review is
`
`instituted as to claims 31, 33, and 35 of the ’667 patent based on the
`
`following grounds:
`
`6
`
`
`
`IPR2018-01639
`Patent 9,014,667 B2
`
`
`A. Obviousness under 35 U.S.C. § 103 of claims 31 and 33 over
`
`Obhan, Shatzkamer, and Budka; and
`
`B. Obviousness under 35 U.S.C. § 103 of claim 35 over Obhan,
`
`Taniguchi, and Budka;
`
`FURTHER ORDERED that no other grounds of unpatentability are
`
`authorized for an inter partes review as to any claim of the ’667 patent;
`
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`
`will commence on the entry date of this Decision;
`
`FURTHER ORDERED that Petitioner’s Motion for Joinder with Case
`
`IPR2018-00558 is granted, and Petitioner is joined as a party to Case
`
`IPR2018-00558;
`
`FURTHER ORDERED that Case IPR2018-01639 is instituted, joined
`
`and subsequently terminated under 37 C.F.R. § 42.72, and all further filings
`
`in the joined proceeding shall be made in Case IPR2018-00558;
`
`FURTHER ORDERED that the case caption in Case IPR2018-00558
`
`shall henceforth list Petitioner as a petitioner entity and include a footnote
`
`reflecting the joinder of IPR2018-01639 with IPR2018-00558 in accordance
`
`with the attached example;
`
`FURTHER ORDERED that the Scheduling Order entered in
`
`IPR2018-00558 shall remain in effect and govern the proceeding, subject to
`
`any schedule changes agreed to by the parties in IPR2018-00558 pursuant to
`
`the Scheduling Order;
`
`FURTHER ORDERED that Petitioner’s participation in the briefing,
`
`depositions, and oral argument of the joined proceeding shall be subject to
`
`the acquiescence of the original petitioner in IPR2018-00558 to Petitioner’s
`
`7
`
`
`
`IPR2018-01639
`Patent 9,014,667 B2
`
`participation and, absent our express authorization, Petitioner shall not file
`
`papers or exhibits apart from the original petitioner in IPR2018-00558;
`
`FURTHER ORDERED that, absent our express authorization to the
`
`contrary, Petitioner shall be bound by the conditions set forth on pages 6–7
`
`of its Motion for Joinder (Paper 3) from IPR2018-01639 and reproduced
`
`above, so long as the original petitioner in IPR2018-00558 remains a party
`
`to IPR2018-00558; and
`
`FURTHER ORDERED that a copy of this Decision shall be entered
`
`into the file of Case IPR2018-00558.
`
`
`
`PETITIONER:
`
`Joseph Palys
`josephpalys@paulhastings.com
`
`Naveen Modi
`naveenmodi@paulhastings.com
`
`PATENT OWNER:
`
`Lawrence Cogswell
`Lawrence.cogswell@hbsr.com
`
`Mark Tredinnick
`Mark.tredinnick@hbsr.com
`
`Timothy Meagher
`Timothy.meagher@hbsr.com
`
`8
`
`
`
`Trials@uspto.gov
`571.272.7822
`
`Paper No. 9
`Entered: November 1, 2018
`
`Example Case Caption for Joined Proceeding
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC. and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`KONINKLIJKE KPN N.V.,
`Patent Owner.
`____________
`
`Case IPR2018-005581
`Patent 9,014,667 B2
`____________
`
`
`
`
`
`
`
`
`
`1 Case IPR2018-01639 has been joined with this proceeding.
`
`
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