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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GOOGLE LLC
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`Petitioner
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`v.
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`IRON OAK TECHNOLOGIES, LLC
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`(record) Patent Owner.
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`Case IPR2019-00111
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`Patent No. 5,699,275
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`MOTION FOR JOINDER
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
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`IPR2019-00111
`Patent 5,699,275
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`Google LLC (“Joinder Petitioner”) respectfully moves for joinder under 35
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`U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) of its petition for inter partes review in
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`this proceeding (“Joinder Petition”) with the instituted inter partes review petition
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`in Samsung Electronics Co., Ltd. v. Iron Oak Technologies, Case No. IPR2018-
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`01553 (“Samsung Petition”).
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`The Joinder Petition is substantively identical to the Samsung Petition,
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`relying on the same grounds and the same evidence in challenging the same claim
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`of the same patent as the Samsung Petition. Moreover, Joinder Petitioner
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`expressly agrees to adhere to the Board’s schedule in IPR2018-01553 upon
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`institution and to take an “understudy” role in the joined proceedings.
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`Accordingly, joinder is appropriate because it will promote efficient resolution of
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`the validity of the involved patent, will not cause any undue delay, and will not
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`prejudice or burden the parties in IPR2018-01553.
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`This motion for joinder is timely under 37 C.F.R. §§ 42.22 and 42.122(b)
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`because it is being filed not more than 1 month after institution of the Samsung
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`Petition in IPR2018-01553 (instituted Feb. 27, 2019).
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`II.
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`STATEMENT OF MATERIAL FACTS
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`On August 21, 2018, Samsung Electronics Co., Ltd. (“Samsung”) filed a
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`petition for inter partes review (IPR2018-01553) of claim 1 of U.S. Patent No.
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`IPR2019-00111
`Patent 5,699,275
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`5,699,275 (“the ‘275 patent”), citing two grounds of unpatentability. A notice
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`according filing date was mailed on September 11, 2018. A preliminary response
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`to the Samsung Petition was filed on December 11, 2018.
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`On October 24, 2018, Joinder Petitioner filed its Joinder Petition in the
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`instant IPR2019-00111 proceeding challenging the same claim of the ‘275 patent
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`on the same grounds as the Samsung Petition. Compare Joinder Petition at 3-65,
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`with Samsung Petition at 3-65. Accordingly, as noted above, the Joinder Petition
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`is substantially identical to the Samsung Petition, with only formal matters (such
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`as the caption, mandatory notices, signature of counsel and certificate of service)
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`changed. A preliminary response to the Joinder Petition was filed on February 15,
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`2019. That preliminary response, according to Patent Owner, is “substantively
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`identical” to Patent Owner’s preliminary response in IPR2018-01553. POPR at 1.
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`On February 27, 2019, the Board instituted the Samsung Petition in
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`IPR2018-01553 as to all grounds set forth in the Samsung Petition.
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`III. STATEMENT OF REASONS FOR REQUESTED RELIEF
`A.
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`Legal Standard
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`The Leahy-Smith America Invents Act (“AIA”) explicitly provides for
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`joinder of inter partes review (“IPR”) proceedings. The statutory provision
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`governing joinder of IPR proceedings is 35 U.S.C. § 315(c) that reads as follows:
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`(c) JOINDER.--If the Director institutes an inter partes
`review, the Director, in his or her discretion, may join as
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`IPR2019-00111
`Patent 5,699,275
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`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 partes review under section 314.
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`“Any request for joinder must be filed, as a motion under § 42.22, no later than
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`one month after the institution date of any inter partes review for which joinder is
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`requested.” 37 C.F.R. § 42.122(b).
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`In exercising its discretion to grant joinder, the Board considers the impact
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`of substantive and procedural issues on the proceedings, as well as other
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`considerations, while being “mindful that patent trial regulations, including the
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`rules for joinder, must be construed to secure the just, speedy, and inexpensive
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`resolution of every proceeding.” See Dell Inc. v. Network-1 Security Solutions,
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`Inc., Case IPR2013-00385, Paper No. 17 at 3 (PTAB July 29, 2013). The Board
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`should “also take into account the policy preference for joining a party that does
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`not present new issues that might complicate or delay an existing proceeding.”
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`Id. at 10.
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`As the Board has explained, “A motion for joinder should: (1) set forth the
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`reasons why joinder is appropriate; (2) identify any new grounds of unpatentability
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`asserted in the petition; (3) explain what impact (if any) joinder would have on the
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`IPR2019-00111
`Patent 5,699,275
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`trial schedule for the existing review; and (4) address specifically how briefing
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`and discovery may be simplified.” Id. at 4. Each of these four factors is addressed
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`in turn below.
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`B.
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`Analysis
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`1.
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`Factor 1: Joinder Is Appropriate
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`The Board “routinely grants motions for joinder where the party seeking
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`joinder introduces identical arguments and the same grounds raised in the existing
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`proceeding.” Samsung Elecs. et al. v. Raytheon Co., IPR2016-00962, Paper 12 at
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`9 (Aug. 24, 2016) (internal quotations and citations omitted); Enzymotec Ltd. et
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`al. v. Neptune Techs. & Bioresources, Inc. IPR2014-00556, Paper No. 19 at 6 (July
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`9, 2014) (The Board is “mindful of a policy preference for joining a party that does
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`not present new issues that might complicate or delay an existing proceeding.”).
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`Here, joinder is appropriate because the Joinder Petition relies on identical
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`arguments and the same grounds raised in the Samsung Petition. Specifically, the
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`Joinder Petition involves the same patent, the same challenged claim, the same
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`prior art, the same exhibits, the same declarations from the same experts, and the
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`same grounds that were instituted in IPR2018-01553. Compare Joinder Petition at
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`3-65, with Samsung Petition at 3-65.
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`Accordingly, because the Joinder Petition and the Samsung Petition are
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`substantially identical, good cause exists for joining the proceedings so that the
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`IPR2019-00111
`Patent 5,699,275
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`Board can efficiently resolve the common grounds in both. Joinder is also
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`appropriate because the Joinder Petition does not present any new issues that
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`would complicate or delay the proceeding. Finally, joinder is appropriate because
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`the substantial questions of invalidity raised in the Samsung Petition affect the
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`Joinder Petitioner, given that Patent Owner has also asserted the ’275 patent
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`against Joinder Petitioner.
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`2.
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`Factor 2: No New Grounds of Unpatentability Are Asserted
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`As noted above with respect to Factor 1, the Joinder Petition is substantially
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`identical to the Samsung Petition, and involves the same patent, the same
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`challenged claim, the same prior art, and the same grounds as the Samsung
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`Petition. Accordingly, the Joinder Petition does not present any new grounds of
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`unpatentability.
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`3.
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`Factor 3: Joinder Would Have No Impact on the Schedule
`in IPR2018-01553
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`Because the Joinder Petition is substantially identical to the Samsung
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`Petition, there are no new issues for the Patent Owner to address. Moreover,
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`Joinder Petitioner hereby expressly consents to the trial schedule the Board entered
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`in IPR2018-01553. As noted below, Petitioner also agrees to take an “understudy”
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`role in IPR2018-01553, so long as Samsung remains an active party in IPR2018-
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`01553. In addition, because the Joinder Petition relies on the same expert
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`declarations, no additional depositions will be needed for in the joined
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`IPR2019-00111
`Patent 5,699,275
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`proceedings. Accordingly, joinder will have little or no impact on the trial
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`schedule in IPR2018-01553.
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`4.
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`Factor 4: Procedures to Simplify Briefing and Discovery
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`Joining the IPR petitions will simplify discovery. As explained above, the
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`Joinder Petition relies on the same grounds and expert declarations, and Joinder
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`Petitioner expressly agrees to the existing trial schedule in IPR2018-01553.
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`Joinder Petitioner further agrees that, so long as Samsung remains an active party
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`to the proceeding, the following conditions shall apply:
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`a. All filings by the Joinder Petitioner in the joined proceedings shall be
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`consolidated with the filings of Samsung, unless a filing solely
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`concerns issues that do not involve Samsung or concerns issues
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`which Samsung intends to waive (e.g., a motion to amend claims
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`which Samsung does not seek to oppose in full);1
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`b. The Joinder Petitioner shall not be permitted to raise any new grounds
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`not already instituted by the Board, or introduce any argument or
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`1 In the event that Joinder Petitioner believes that a short separate filing is
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`warranted under this paragraph 4.a, then Joinder Petitioner will promptly request a
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`conference call to seek permission and explain its reasons to submit a short
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`separate filing.
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`IPR2019-00111
`Patent 5,699,275
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`discovery not already introduced by Samsung;
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`c. Joinder Petitioner shall be bound by any agreement between Patent
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`Owner and Samsung concerning discovery and/or depositions; and
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`d. Joinder Petitioner at deposition shall not receive any direct, cross
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`examination or redirect time beyond that permitted for Samsung in
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`this proceeding alone under either 37 C.F.R. § 42.53 or any
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`agreement between Patent Owner and Samsung.
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`See Mylan Pharms. Inc. v. Novartis AG, IPR2014-00550, Paper 38 at 5 (PTAB
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`Apr. 10, 2015); Samsung Elecs., Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper
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`12 at 6 (Aug. 24, 2016); Nidec Corp. v. Intellectual Ventures II LLC, IPR2018-
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`00598 Paper 10 at 5-6 (Apr. 26, 2018).
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`Finally, Patent Owner will not be prejudiced by the Board’s grant of this
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`motion because Joinder Petitioner expressly agrees to take an “understudy” role.
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`Therefore, there would be no additional procedural complexity as Joinder
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`Petitioner would only take the primary role if Samsung ceases to participate in the
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`IPR. See, e.g. Teva Pharmaceuticals USA, Inc. v. Allergan, Inc., IPR2017-00579,
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`Paper No. 9 at 5; Mylan Pharmaceuticals Inc. v. Novartis AG et al., IPR2015-
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`00268, Paper No. 17 at 5.
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`IV. CONCLUSION
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`For the foregoing reasons, Joinder Petitioner respectfully requests that this
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`IPR2019-00111
`Patent 5,699,275
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`proceeding be joined with IPR2018-01553.
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`Date: February 28, 2019
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`Respectfully submitted,
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`/ Andrew S. Baluch /
`Andrew S. Baluch (RN 57,503)
`Counsel for Petitioner
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`IPR2019-00111
`Patent 5,699,275
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing MOTION FOR
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`JOINDER was served on February 28, 2019 at the following service address of
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`record:
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`
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`adeaver@joneswalker.com
`bmcaughan@yettercoleman.com
`jandrews@yettercoleman.com
`clonvick@yettercoleman.com
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`By: / Andrew S. Baluch /
`Andrew S. Baluch (RN 57,503)
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`10
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