Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 15
`Entered: February 28, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ZTE (USA) LLC,
`Petitioner,
`
`v.
`
`SEVEN NETWORKS, LLC,
`Patent Owner.
`_______________
`
`Cases IPR2019-00412 (Patent 9,351,254)
` IPR2019-00460 (Patent 9,516,127)
` IPR2019-00461 (Patent 9,516,129)
` IPR2019-00585 (Patent 9,247,019)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
`
`
`
`
`Paper No. 15
`Entered: February 28, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ZTE (USA) LLC,
`Petitioner,
`
`v.
`
`SEVEN NETWORKS, LLC,
`Patent Owner.
`_______________
`
`Cases IPR2019-00412 (Patent 9,351,254)
` IPR2019-00460 (Patent 9,516,127)
` IPR2019-00461 (Patent 9,516,129)
` IPR2019-00585 (Patent 9,247,019)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.
`
`
`
`IPR2019-00412 (Patent 9,351,254); IPR2019-00460 (Patent 9,516,127)
`IPR2019-00461 (Patent 9,516,129); IPR2019-00585 (Patent 9,247,019)
`
`
`I. INTRODUCTION
`ZTE (USA) LLC (“ZTE”) filed a Petition (Paper 23) requesting an
`inter partes review (“IPR”), and a Motion for Joinder (Paper 3) in each of
`the above-identified proceedings (the “ZTE IPRs”), seeking to join the
`following proceedings: Case IPR2018-01106 filed by Samsung Electronics
`Co., Ltd. and Samsung Electronics America, Inc. (collectively “Samsung”),
`and Cases IPR2018-01048, IPR2018-01050, and IPR2018-01117 filed by
`Google LLC (“Google”) (collectively, the “Samsung-Google IPRs”).
`SEVEN Networks, LLC (“Patent Owner”) filed an Opposition (Paper 10) in
`each of the ZTE cases. At this time, ZTE filed a Reply in each case, except
`in Case IPR2019-00585.4 Patent Owner’s Preliminary Responses are due in
`April or May of 2019, more than one month from this Order. The Decision
`on Institution in each case is due three months after the date of the
`Preliminary Response, the date of a waiver of the Preliminary Response, or
`“the last date on which such response may be filed.” 35 U.S.C. § 314(b).
`As to the procedural posture of the Samsung-Google IPRs, the parties
`in each of those cases filed a Joint Motion to Terminate, and the panels
`granted the Motions and terminated the proceedings in view of the parties’
`settlement agreements. See, e.g., Case IPR2018-01106, Paper 29.
`On February 26, 2019, Judges Dang, Easthom, Chang, Giannetti,
`Weinschenk, and Harlow held a conference call with counsel for ZTE and
`
`
`3 We cite to the record in IPR2019-00460, unless otherwise noted.
`4 The Reply for Case IPR2019-00585 is due on March 22, 2019, one month
`after service of Patent Owner’s Opposition. See 37 C.F.R. § 42.25(a)(2).
`
`2
`
`
`
`IPR2019-00412 (Patent 9,351,254); IPR2019-00460 (Patent 9,516,127)
`IPR2019-00461 (Patent 9,516,129); IPR2019-00585 (Patent 9,247,019)
`
`counsel for Patent Owner. ZTE requested the conference call5 to seek
`authorization to file a request for rehearing on the Decisions granting the
`Joint Motions to Terminate the Samsung-Google IPRs.
`For the reasons stated below, ZTE’s request for authorization to file a
`request for rehearing on the Decisions granting the Joint Motions to
`Terminate the Samsung-Google IPRs is denied.
`
`
`II. DISCUSSION
`During the conference call, as support, ZTE argued that the Decisions
`granting the Joint Motions to Terminate do not mention ZTE’s Motions for
`Joinder. ZTE also argued that terminating the underlying proceedings
`before deciding its Motions for Joinder would prejudice ZTE, and that
`joinder with the Samsung-Google IPRs would be appropriate as its Petitions
`submit identical grounds, arguments, and evidence presented in the
`Samsung-Google IPRs. According to ZTE, the Board routinely grants
`joinder despite a later-filed motion to terminate the proceeding to be joined.
`Patent Owner opposed, arguing that filing a motion for joinder earlier
`than a motion to terminate is not determinative, as the Board also has denied
`joinder notwithstanding a later-filed motion to terminate. Patent Owner also
`pointed out that ZTE is not a party to the Samsung-Google IPRs.
`During the conference call, we noted that the decision to grant joinder
`is discretionary. See 35 U.S.C. § 315(c) (“[T]he Director, in his or her
`discretion, may join as a party to that inter partes review any person who
`
`
`5 Although ZTE requested the conference call on January 17, 2019, via
`email (Ex. 1016), the panels were not assigned to the ZTE IPRs until
`February 20, 2019.
`
`3
`
`
`
`IPR2019-00412 (Patent 9,351,254); IPR2019-00460 (Patent 9,516,127)
`IPR2019-00461 (Patent 9,516,129); IPR2019-00585 (Patent 9,247,019)
`
`properly files a petition . . . .”). And the Board decides motions for joinder
`on a case-by-case basis upon consideration of the totality of the
`circumstances. Notably, “[t]here 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.
`Here, we are mindful that the settlement agreement between Samsung
`and Patent Owner, and the settlement agreement between Google and Patent
`Owner, involve more than the four above-identified Samsung-Google IPRs.
`Indeed, Samsung and Patent Owner filed Joint Motions to Terminate in
`fourteen IPR proceedings, and Google and Patent Owner filed Joint Motions
`to Terminate in eleven IPR proceedings, none of which has reached a final
`written decision. See, e.g., Case IPR2018-01106, Paper 27, 1−2; Case
`IPR2018-01107, Paper 29, 1−2. Moreover, the Joint Motions to Terminate
`indicate that the parties have 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. See, e.g.,
`Case IPR2018-01106, Paper 27, 2−3; Case IPR2018-01107, Paper 29, 2−3.
`Based on the totality of the circumstances, we believe that granting of the
`Joint Motions to Terminate is appropriate, consistent with the “strong policy
`reasons to favor settlement between the parties to a proceeding.” Practice
`Guide, 77 Fed. Reg. at 48,768.
`In any event, ZTE currently is not a party to the Samsung-Google
`IPRs. Therefore, ZTE is not authorized to file a request for rehearing on the
`
`4
`
`
`
`IPR2019-00412 (Patent 9,351,254); IPR2019-00460 (Patent 9,516,127)
`IPR2019-00461 (Patent 9,516,129); IPR2019-00585 (Patent 9,247,019)
`
`Decisions granting the Joint Motions to Terminate the Samsung-Google
`IPRs. Also, additional briefing on the termination issue is not necessary, as
`ZTE has the opportunity to file a Motion for Joinder and a Reply in each of
`the ZTE IPRs. Furthermore, filing a request for rehearing in the ZTE IPRs
`is premature because we have not yet decided ZTE’s Petitions or Motions
`for Joinder. If the panels subsequently deny ZTE’s Petitions or Motions for
`Joinder, ZTE may file a request for rehearing on that Decision in each of the
`ZTE IPRs, pursuant to 37 C.F.R. § 42.71(d).
`
`
`III. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that ZTE’s request for authorization to file a request for
`rehearing on the Decisions granting the Joint Motions to Terminate the
`Samsung-Google IPRs is denied.
`
`
`5
`
`
`
`IPR2019-00412 (Patent 9,351,254); IPR2019-00460 (Patent 9,516,127)
`IPR2019-00461 (Patent 9,516,129); IPR2019-00585 (Patent 9,247,019)
`
`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
`
`
`6
`
`
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