Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 18
`Entered: June 6, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ZTE (USA) LLC,
`Petitioner,
`
`v.
`
`SEVEN NETWORKS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2019-00460
`Patent 9,516,127 B2
`
`____________
`
`
`
`
`Before THU A. DANG, JONI Y. CHANG, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Motion for Joinder
`35 U.S.C. § 315(c)
`
`Denying Institution of Inter Partes Review
`35 U.S.C. § 315(b)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 18
`Entered: June 6, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ZTE (USA) LLC,
`Petitioner,
`
`v.
`
`SEVEN NETWORKS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2019-00460
`Patent 9,516,127 B2
`
`____________
`
`
`
`
`Before THU A. DANG, JONI Y. CHANG, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Motion for Joinder
`35 U.S.C. § 315(c)
`
`Denying Institution of Inter Partes Review
`35 U.S.C. § 315(b)
`
`
`
`
`
`
`
`IPR2019-00460
`Patent 9,516,127 B2
`
`
`I. INTRODUCTION
`
`On December 27, 2018, ZTE (USA) LLC (“ZTE”) filed a Petition
`
`(Paper 2, “Pet.”) requesting an inter partes review (“IPR”) of claims 1−24,
`
`26−33, 35−42, and 44−50 (“the challenged claims”) of U.S. Patent
`
`9,516,127 B2 (Ex. 1001, “the ’127 patent”). ZTE also filed a Motion for
`
`Joinder (Paper 3, “Mot.”) requesting that it be joined to Case IPR2018-
`
`01106 (the “Samsung IPR”) filed by Samsung Electronics Co., Ltd. and
`
`Samsung Electronics America, Inc. (collectively, “Samsung”). Mot. 1.
`
`Subsequently, the Samsung IPR was terminated on January 11, 2019,
`
`because the parties involved in that proceeding had settled. See Case
`
`IPR2018-01106, Paper 29.
`
`SEVEN Networks, LLC (“Patent Owner”) timely filed a Preliminary
`
`Response to the instant Petition on April 16, 2019. Paper 17 (“Prelim.
`
`Resp.”). Patent Owner also timely filed an Opposition (Paper 10, “Opp.”) to
`
`the Motion for Joinder, and ZTE filed a Reply (Paper 11, “Reply”) to the
`
`Opposition in support of its Joinder Motion.
`
`For the reasons stated below, both ZTE’s Motion for Joinder and
`
`Petition are denied, and we do not institute an inter partes review.
`
`A. Related Matters
`
`The parties indicate that the ’127 patent was involved in SEVEN
`
`Networks, LLC v. ZTE (USA) Inc., Case No. 3:17-cv-01495 (N.D. Tex.).
`
`Pet. 75; Paper 14, 1. The parties also list other related proceedings. Pet. 75;
`
`Paper 14, 1−2.
`
`2
`
`
`
`IPR2019-00460
`Patent 9,516,127 B2
`
`
`B. Prior Art Relied Upon
`
`ZTE relies upon the references listed below (Pet. 2−3).
`
`Reference
`
`Exhibit
`
`Giaretta US 2012/0185577 A1, published July 19, 2012
`
`Backholm US 2012/0023236 A1, published Jan. 26, 2012
`
`Pathak
`
`“What is keeping my phone awake? Characterizing
`and Detecting No-Sleep Energy Bugs in Smartphone
`Apps,” ACM (2012).
`
`Aleksic
`
`US 2008/0057894 A1, published Mar. 6, 2008
`
`Hackborn US 8,280,456 B2, issued Oct. 2, 2012
`
`Murphy
`
`“The Busy Coder’s Guide to Android
`Development,” CommonsWare, LLC (2012)
`
`
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1011
`
`C. Asserted Grounds of Unpatentability
`
`ZTE asserts the following grounds of unpatentability (Pet. 2)1:
`
`Claims
`
`Basis
`
`References
`
`1−23
`
`§ 103
`
`Giaretta, Backholm, and Pathak
`
`
`1 The relevant post-grant review provisions of the America Invents Act
`(“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), took effect on March 16,
`2013. 125 Stat. at 293, 311. The earliest possible effective filing date of the
`’127 patent is March 25, 2013. Therefore, our citations to Title 35 are to its
`post-AIA version. Section 4(c) of the AIA designated 35 U.S.C. § 112 first
`and second paragraphs as 35 U.S.C. § 112(a) and (b), respectively, effective
`September 16, 2012. 125 Stat. at 296–297.
`
`3
`
`
`
`IPR2019-00460
`Patent 9,516,127 B2
`
`
`Claims
`
`Basis
`
`References
`
`24, 26, 28−33, 36−42, 44,
`and 46−50
`
`§ 103
`
`Backholm and Aleksic
`
`27, 35, and 45
`
`§ 103
`
`Backholm, Aleksic, and
`Hackborn
`
`
`
`II. ANALYSIS
`
`A. Motion for Joinder
`
`The decision whether to grant joinder is discretionary, as
`
`35 U.S.C. § 315 provides, in pertinent part with emphases added:
`
`(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
`partes review under section 314.
`
`A motion for joinder should (1) set forth reasons why joinder is appropriate;
`
`(2) identify any new grounds of unpatentability asserted in the petition;
`
`(3) explain what impact, if any, joinder would have on the trial schedule for
`
`the existing review; and (4) address specifically how briefing and discovery
`
`may be simplified. See Kyocera Corp. v. Softview LLC, Case IPR2013-
`
`00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15). As the moving party,
`
`ZTE has the burden to establish that it is entitled to the requested relief.
`
`37 C.F.R. § 42.20(c).
`
`In its Motion, ZTE argues that joinder with the Samsung IPR is
`
`appropriate because its Petition and the Samsung IPR petition are
`
`substantively identical, in that they contain the same prior art grounds and
`
`4
`
`
`
`IPR2019-00460
`Patent 9,516,127 B2
`
`supporting evidence, against the same claims. Mot. 1, 5−6. ZTE also avers
`
`that joinder should have no impact on the Samsung IPR trial schedule. Id. at
`
`6−7. ZTE further contends that ZTE agrees to take an “understudy” role
`
`which will simplify briefing and discovery. Id. at 7−9.
`
`Patent Owner opposes, arguing that ZTE’s Motion for Joinder should
`
`not be granted because the Samsung IPR has been terminated. Opp. 1−4.
`
`We agree with Patent Owner. Given that the Samsung IPR is no longer
`
`pending, it cannot serve as a proceeding to which this proceeding may be
`
`joined.
`
`In its Reply, ZTE argues that its Motion for Joinder was filed prior to
`
`the filing of the Joint Motion to Terminate the Samsung IPR. Reply 1−2.
`
`According to ZTE, the Board “routinely grants joinder motions despite a
`
`later-filed motion to terminate the proceeding to be joined.” Id. at 2 n.1.
`
`Further to the aforementioned briefing, ZTE was provided an
`
`additional opportunity to present arguments in a conference call with the
`
`panel on February 26, 2019. Paper 15. During that call, ZTE argued that
`
`terminating the Samsung IPR before deciding ZTE’s Joinder Motion would
`
`prejudice ZTE, and that joinder with the Samsung IPR would be appropriate
`
`as its Petition submits identical grounds, arguments, and evidence presented
`
`in the Samsung IPR. Id. at 3.
`
`However, as noted by Patent Owner (id.; Prelim. Resp. 3−9), filing a
`
`joinder motion earlier than a motion to terminate is not determinative
`
`because the Board also has previously denied joinder notwithstanding a
`
`later-filed motion to terminate. See, e.g., ZTE USA, Inc. v. Parthenon
`
`Unified Memory Architecture LLC, Case IPR2016-00664, slip op. at 3
`
`(PTAB June 8, 2016) (Paper 10); LG Elec., Inc. v. Cellular Commc’ns
`
`5
`
`
`
`IPR2019-00460
`Patent 9,516,127 B2
`
`Equip. LLC, Case IPR2016-00711, slip op. at 1−2 (PTAB May 13, 2016)
`
`(Paper 7). Based on the prior Board cases, it has been established that there
`
`is no per se rule, in that the Board does not automatically grant an
`
`earlier-filed motion for joinder. As noted above, the decision to grant
`
`joinder is discretionary. 35 U.S.C. § 315(c). The Board decides joinder
`
`motions on a case-by-case basis upon consideration of the totality of the
`
`circumstances. See, e.g., Unified Patents Inc. v. C-Cation Technologies,
`
`LLC, Case IPR2015-01045 (PTAB Oct. 7, 2015) (Paper 15). Moreover,
`
`although ZTE filed its Joinder Motion seven business days prior to the Joint
`
`Motion to Terminate, ZTE does not explain why it could not have filed its
`
`Petition earlier, to account for the time for processing the Petition, assigning
`
`a panel, and allowing the three-month time period for filing Patent Owner’s
`
`Preliminary Response. See generally Mot.; Reply. In light of the foregoing,
`
`we are not persuaded by ZTE’s argument that terminating the Samsung IPR
`
`before deciding its Joinder Motion would unfairly prejudice ZTE.
`
`To the extent that ZTE means to suggest that we should not have
`
`terminated the Samsung IPR in light of ZTE’s Joinder Motion, we disagree.
`
`Pursuant to 35 U.S.C. § 317(a), we properly exercised our discretion to
`
`terminate the Samsung IPR in view of the parties’ request and settlement
`
`agreement. See also 37 C.F.R. § 42.72. “There are strong public policy
`
`reasons to favor settlement between the parties to a proceeding.” Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012)
`
`(“Practice Guide”). “The Board expects that a proceeding will terminate
`
`after the filing of a settlement agreement, unless the Board already has
`
`decided the merits of the proceeding.” Id.
`
`6
`
`
`
`IPR2019-00460
`Patent 9,516,127 B2
`
`
`Furthermore, as noted in our prior Order (Paper 15, 4), the settlement
`
`agreement between Samsung and Patent Owner involved more than the
`
`proceedings sought to be joined. Indeed, Samsung and Patent Owner filed a
`
`Joint Motion to Terminate in fourteen IPR proceedings, each of which was
`
`in an early stage and had not reached a final written decision. See, e.g., Case
`
`IPR2018-01106, Paper 27, 1−2 (nine of the fourteen IPR proceedings had
`
`not yet been instituted, and, in the other five IPR proceedings, Patent
`
`Owner’s responses were not yet filed).2 Moreover, the Joint Motion to
`
`Terminate indicated that the parties settled their disputes and executed the
`
`settlement agreements to terminate all IPR proceedings, as well as the
`
`related district court litigations, regarding the patents at issue. Id. at 2−3.
`
`Based on the totality of the circumstances, we determined that granting the
`
`Joint Motion to Terminate the Samsung IPR was warranted, consistent with
`
`the “strong policy reasons to favor settlement between the parties to a
`
`proceeding.” Practice Guide, 77 Fed. Reg. at 48,768.
`
`Given that the Samsung IPR has been terminated, there is no
`
`proceeding for ZTE to join. Hence, ZTE’s argument that joinder with the
`
`Samsung IPR would be appropriate is also unavailing.
`
`In addition, we are not persuaded by ZTE’s argument that joinder
`
`would have had no impact on the Samsung IPR trial schedule. Mot. 6−7.
`
`Generally, we decide whether joinder is appropriate “after receiving a
`
`preliminary response under section 313,” when we determine whether
`
`institution of an inter partes review is warranted. See 35 U.S.C. § 315(c)
`
`(“[T]he Director, in his or her discretion, may join . . . any person who
`
`
`2 A copy of the Joint Motion to Terminate the Samsung IPR has been
`provided by Petitioner as Exhibit 1014 in the instant proceeding.
`
`7
`
`
`
`IPR2019-00460
`Patent 9,516,127 B2
`
`properly files a petition under section 311 that the Director, after receiving a
`
`preliminary response . . . , determines warrants the institution of an inter
`
`partes review under section 314.”). Patent Owner’s Preliminary Response
`
`was filed in the instant proceeding on April 16, 2019, more than three
`
`months after the termination of the Samsung IPR, on January 11, 2019. See
`
`Case IPR2018-01106, Paper 29. In this case, Patent Owner correctly noted
`
`in its Preliminary Response that the Samsung IPR had been terminated.
`
`ZTE does not proffer a sufficient reason why we should have delayed for
`
`more than three months to dismiss fourteen IPR proceedings pursuant to the
`
`parties’ settlement. See generally Mot.; Reply. Therefore, we are not
`
`persuaded by ZTE’s argument that joinder would have no impact on the
`
`Samsung IPR trial schedule.
`
`Furthermore, we are not convinced by ZTE’s argument that briefing
`
`and discovery would have been simplified. Mot. 7−9. Samsung submitted
`
`confidential documents and declarations regarding the issues of real
`
`party-in-interest and privity in the Samsung IPR. Case IPR2018-01106,
`
`Papers 16, 17, 20. With Samsung no longer participating in the case, ZTE
`
`could not have assumed an “understudy” role. Mot. 8. ZTE does not
`
`explain how it would have access to the confidential documents and how it
`
`would have produced witnesses for cross-examination when Samsung is no
`
`longer participating in the Samsung IPR. Id. In short, ZTE fails to explain
`
`sufficiently how briefing and discovery regarding the issues of real party-in-
`
`interest and privity would have been simplified by the joinder.
`
`Lastly, ZTE argues that the Joint Motion to Terminate “falsely stated
`
`that the parties ‘are unaware of . . . any other matter before the USPTO that
`
`would be affected by the requested termination,’” and contains “statements
`
`8
`
`
`
`IPR2019-00460
`Patent 9,516,127 B2
`
`(and omissions) [that] were misleading and concealing from the ’-01106
`
`case Panel the full ramifications of granting the parties’ motion to
`
`terminate.” Reply 1−2. ZTE also contends that the Decision terminating the
`
`Samsung IPR does not mention ZTE’s Motion for Joinder. Paper 15, 3.
`
`However, ZTE admits that the Joint Motion to Terminate identifies
`
`the instant proceeding in a footnote. Reply 1−2. In fact, the Joint Motion to
`
`Terminate clearly identifies other pending proceedings that involve or have
`
`involved the patents at issue, including the instant proceeding, before stating
`
`that “[t]he Parties are unaware of any other pending related proceedings
`
`regarding the Patent before the Board, or any other matter before the USPTO
`
`that would be affected by the requested termination of this proceeding.”
`
`Case IPR2018-01106, Paper 27, 3−4 n.1. We do not find this statement, or
`
`the absence of a specific reference to ZTE’s Motion for Joinder, to be false
`
`or misleading, as ZTE alleges. To the extent that ZTE suggests placing the
`
`identification of the instant proceeding in a footnote is concealing the
`
`existence of this proceeding, we find such an argument unavailing. There is
`
`no prohibition against footnotes, and we do not disregard footnotes.
`
`Moreover, it is not necessary for the panel to mention specifically ZTE’s
`
`Joinder Motion in the Decision terminating the Samsung IPR, as ZTE is not
`
`a party to the Samsung IPR.
`
`For the foregoing reasons, ZTE’s Motion for Joinder is denied.
`
`B. ZTE’s Petition is Time-Barred under 35 U.S.C. § 315(b)
`
`Section 315(b) states the following:
`
`An inter partes review may not be instituted if the petition
`requesting the proceeding is filed more than 1 year after the date
`on which the petitioner, real party in interest, or privy of the
`
`9
`
`
`
`IPR2019-00460
`Patent 9,516,127 B2
`
`
`petitioner is served with a complaint alleging infringement of the
`patent. The time limitation set forth in the preceding sentence
`shall not apply to a request for joinder under subsection (c).
`
`35 U.S.C. § 315(b). “The first sentence of § 315(b) places a time limitation
`
`on the filing of a petition.” Proppant Express Inv., LLC v. Oren Techs.,
`
`LLC, Case IPR2018-00914, slip. op. at 17 (PTAB Mar. 13, 2019) (Paper 38)
`
`(precedential). The second sentence of § 315(b) “provides an exception to
`
`that time limitation for a request for joinder under § 315(c).” Id.
`
`Here, as discussed above, ZTE’s Motion for Joinder is denied. As
`
`such, we must determine whether ZTE’s Petition was filed timely within the
`
`1-year time period set forth in the first sentence of § 315(b).
`
`In its Petition, ZTE asserts that it “is not barred or estopped from
`
`requesting this review challenging the Challenged Claims on the
`
`below-identified grounds.” Pet. 1. ZTE identifies “ZTE Corporation and
`
`ZTE (USA), Inc. are the real parties-in-interest.” Id. at 75. ZTE also
`
`indicates that the ’127 patent is the subject of several civil actions, including:
`
`(1) SEVEN Networks, LLC, v. ZTE (USA) Inc., Case No. 2:17-cv-440 (E.D.
`
`Tex.); and (2) SEVEN Networks, LLC v. ZTE (USA) Inc., Case No. 3-17-cv-
`
`04600 (N.D. Tex.). Id.; Mot. 2.
`
`Patent Owner argues that ZTE’s Petition is time-barred because ZTE
`
`Corporation was served with a complaint alleging infringement of the ’127
`
`patent more than 1 year prior to the filing of ZTE’s Petition. Opp. 5−6;
`
`Prelim. Resp. 2. We agree with Patent Owner.
`
`The Proof of Service filed by Patent Owner with its Opposition
`
`indicates that ZTE Corporation, a real party-in-interest to the instant
`
`proceeding, was served with a complaint alleging infringement of the ’127
`
`patent on July 13, 2017. Ex. 2002 (Proof of Service); Ex. 2003 (Complaint)
`
`10
`
`
`
`IPR2019-00460
`Patent 9,516,127 B2
`
`¶¶ 5, 15, 47−52. This is undisputed. See generally Reply. It is also
`
`undisputed that ZTE’s Petition has been accorded the filing date of
`
`December 27, 2018. Paper 4, 1. Therefore, the evidence in this record
`
`shows that ZTE’s Petition was filed more than 1 year after the date on which
`
`ZTE Corporation was served with a complaint alleging infringement of the
`
`’127 patent. Absent joinder with the Samsung IPR, ZTE’s Petition is
`
`time-barred under the first sentence of § 315(b).
`
`In light of the foregoing, we deny ZTE’s Petition.
`
`
`
`III. CONCLUSION
`
`In summary, we deny ZTE’s Motion for Joinder as the proceeding to
`
`be joined has been terminated. We also deny ZTE’s Petition because it was
`
`not filed within the time limit set forth in the first sentence of § 315(b).
`
`
`
`IV. ORDER
`
`In consideration of the foregoing, it is hereby
`
`ORDERED that ZTE’s Motion for Joinder is denied; and
`
`FURTHER ORDERED that ZTE’s Petition is denied, and no trial is
`
`instituted.
`
`
`
`11
`
`
`
`IPR2019-00460
`Patent 9,516,127 B2
`
`FOR PETITIONER:
`
`James Sobieraj
`Jon Beaupré
`Yuezhong Feng
`Andrea Shoffstall
`BRINKS GILSON & LIONE
`jsobieraj@brinksgilson.com
`jbeaupre@brinksgilson.com
`yfeng@brinksgilson.com
`ashoffstall@brinksgilson.com
`
`
`FOR PATENT OWNER:
`
`Kenneth Weatherwax
`Patrick Maloney
`Edward Hsieh
`Parham Hendifar
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`maloney@lowensteinweatherwax.com
`hsieh@lowensteinweatherwax.com
`hendifar@lowensteinweatherwax.com
`
`
`
`12
`
`
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