IPR2019-01147
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`SAMSUNG ELECTRONICS CO., LTD. and SAMSUNG ELECTRONICS
`AMERICA, INC.,
`Petitioners
`v.
`SPEAKWARE, INC.,
`Patent Owner
`_______________
`Case: IPR2019-01147
`U.S. Patent No. 6,397,186
`_______________
`PETITIONERS’ MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c), 37
`C.F.R. §§ 42.22 AND 42.122(b)
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`SAMSUNG ELECTRONICS CO., LTD. and SAMSUNG ELECTRONICS
`AMERICA, INC.,
`Petitioners
`v.
`SPEAKWARE, INC.,
`Patent Owner
`_______________
`Case: IPR2019-01147
`U.S. Patent No. 6,397,186
`_______________
`PETITIONERS’ MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c), 37
`C.F.R. §§ 42.22 AND 42.122(b)
`
`
`
`TABLE OF CONTENTS
`
`IPR2019-01147
`
`Page
`
`STATEMENT OF RELIEF REQUESTED .................................................... 1
`I.
`STATEMENT OF MATERIAL FACTS ........................................................ 2
`II.
`III. STATEMENT OF REASONS FOR REQUESTED RELIEF ........................ 2
`A.
`Legal Standards ..................................................................................... 2
`B.
`Samsung’s Motion For Joinder Is Timely ............................................. 3
`C.
`Joinder Is Appropriate Because It Will Promote An Efficient
`Determination Of The Validity Of The ’186 Patent Without
`Prejudice To Any Party ......................................................................... 4
`Samsung’s Petition Does Not Raise Any New Grounds Of
`Unpatentability ...................................................................................... 5
`Joinder Would Not Affect The Schedule In The Google 342
`IPR ......................................................................................................... 5
`Briefing and Discovery Will Be Simplified .......................................... 7
`F.
`Joinder Will Create No Prejudice To SpeakWare ................................ 8
`G.
`IV. CONCLUSION ................................................................................................ 8
`
`D.
`
`E.
`
`i
`
`
`
`IPR2019-01147
`
`I.
`
`STATEMENT OF RELIEF REQUESTED
`Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc.
`
`(“Samsung”) respectfully request to join, pursuant to 35 U.S.C. § 315(c) and 37
`
`C.F.R. § 42.122(b), the concurrently filed petition for inter partes review (“IPR”) of
`
`U.S. Patent No. 6,397,186 (“the ’186 patent”) (“Samsung’s Petition”) with the
`
`previously instituted and currently pending IPR captioned Google LLC v.
`
`SpeakWare Inc., No. IPR2019-00342 (“Google 342 IPR”).
`
`Samsung only seeks an understudy role in the proceedings and so files a
`
`Petition that is substantively identical to the Google 342 IPR. This motion and
`
`accompanying petition are timely, being filed within one month of the decision
`
`instituting trial in the Google 342 IPR (Paper 12 issued May 14, 2019).
`
`Under these circumstances (as discussed further below), joinder would create
`
`no additional burden for the Board, Google, or SpeakWare, Inc. (“SpeakWare” or
`
`“Patent Owner”) and would provide for “the just, speedy, and inexpensive
`
`resolution” of the validity of the ’186 patent. See 37 C.F.R. § 42.1(b).
`
`Accordingly, Samsung respectfully requests that the Board grant this motion.
`
`1
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`
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`IPR2019-01147
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`1.
`On July 26, 2018, SpeakWare filed a Complaint against Samsung in the
`
`United States District Court for the Central District of California alleging
`
`infringement of the ’186 patent.
`
`2.
`
`Samsung was served with SpeakWare’s Complaint on August 9, 2018.
`
`See SpeakWare, Inc., v. Samsung Electronics Co., Ltd., et al., C.A. No. 8:18-cv-
`
`01300 (C.D. Cal. filed July 26, 2018) (dkt. 13).
`
`3.
`
`On November 30, 2018, Google filed a petition for IPR challenging
`
`claims 21-55 of the ’186 patent (“Google’s Petition”). See Google LLC v.
`
`SpeakWare Inc., IPR2019-00342, Paper 2 (PTAB Nov. 30, 2018).
`
`4.
`
`On May 14, 2019, the Board instituted Google’s Petition. See id., Paper
`
`12 (PTAB May 14, 2019).
`
`5.
`
`Samsung’s Petition and this motion are being filed within one month of
`
`the decision instituting the Google 342 IPR. See id., Paper 12 (PTAB May 14, 2019).
`
`6.
`
`Samsung’s petition has also been filed less than one year after
`
`SpeakWare served its complaint on Samsung.
`
`III.
`
`STATEMENT OF REASONS FOR REQUESTED RELIEF
`A.
`Legal Standards
`The Leahy-Smith America Invents Act (“AIA”) permits joinder of IPR
`
`proceedings. Joinder is governed by 35 U.S.C. § 315(c), which states:
`
`2
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`
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`IPR2019-01147
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`(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. Everlight
`
`Elecs. Co., Ltd., v. Document Security Sys., Inc., IPR2018-01244, Paper 15 at 5-6
`
`(PTAB Sept. 27, 2018) (citing Kyocera Corp. v. Softview LLC, IPR2013-00004,
`
`Paper 15 at 4 (PTAB Apr. 24, 2013)).
`
`Samsung’s Motion For Joinder Is Timely
`B.
`A motion for joinder is timely if the moving party files within one month of
`
`institution of the IPR for which joinder is requested. 37 C.F.R. § 42.122(b).
`
`Google’s petition was instituted on May 14, 2019. Google, IPR2019-00342, Paper
`
`12 (PTAB May 14, 2019). Samsung’s current motion is thus timely as it is being
`
`filed within one month of the institution date. Moreover, while not pertinent,
`
`Samsung notes that 35 U.S.C. § 315(b) is not at issue here since the present petition
`
`was filed prior to the one-year bar after the service of SpeakWare’s Complaint
`
`alleging infringement.
`
`3
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`IPR2019-01147
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`C.
`
`Joinder Is Appropriate Because It Will Promote An Efficient
`Determination Of The Validity Of The ’186 Patent Without
`Prejudice To Any Party
`Samsung’s Petition is nearly identical to the Google Petition, challenging the
`
`same claims of the ’186 patent with the same prior art, on the same grounds and
`
`relying on a substantially identical expert declaration. The only differences between
`
`Samsung’s Petition and Google’s Petition are the sections regarding Real Party-in-
`
`Interest, Related Matters, and Counsel (which have been appropriately updated) as
`
`well as the section identifying the non-redundancy of Samsung’s Petition and
`
`updates related to the declaration.1 Accordingly, Samsung’s Petition does not raise
`
`any new grounds and does not present any issues that would complicate or delay the
`
`Google 342 IPR. Therefore a consolidated proceeding, including both Samsung and
`
`Google, will be more efficient and less wasteful, as only a single trial on these
`
`identical grounds would be required.
`
`Joining Samsung as a party to the Google 342 IPR would also not cause any
`
`prejudice to either Google or SpeakWare. SpeakWare, as the alleged patent owner,
`
`must respond to the common invalidity grounds identified in Google’s (and
`
`1 Samsung submits a declaration from Dr. Polish, which is substantially identical to
`Dr. Lipoff’s declaration filed by Google. As noted, Samsung will only rely on the
`declaration/Dr. Polish if Google is terminated from the proceedings. In particular,
`the supporting declaration submitted by Google differs from the declaration filed
`by Samsung in that it has been updated to list the qualifications and personal
`experience of Dr. Polish.
`
`4
`
`
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`IPR2019-01147
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`Samsung’s) Petition regardless of joinder. Thus, SpeakWare bears no additional
`
`burden. Also, as Samsung would merely be an understudy, there would be no
`
`prejudice to Google. See, e.g., Everlight, IPR2018-01244, Paper 15 (PTAB Sept.
`
`27, 2018) (granting motion for joinder where petitioner, albeit using a different
`
`expert, acted as an understudy); Celltrion, Inc., v. Genentech, Inc., IPR2018-01019,
`
`Paper 11 (PTAB Oct. 30, 2018) (same).
`
`D.
`
`Samsung’s Petition Does Not Raise Any New Grounds Of
`Unpatentability
`Samsung’s Petition does not assert any new grounds of unpatentability. It
`
`challenges the same claims (21-55) of the ’186 patent based on the same prior art,
`
`arguments, evidence, and grounds of unpatentability as the Google 342 IPR.
`
`Joinder Would Not Affect The Schedule In The Google 342 IPR
`E.
`Given that Samsung timely filed its Petition with this motion, that Samsung
`
`seeks an understudy role, and that Samsung’s Petition raises no new grounds of
`
`unpatentability, joinder of Samsung would not affect the schedule in the IPR.
`
`Samsung, for example, seeks no change to the Scheduling Order for the trial
`
`in the Google 342 IPR. Google, IPR2019-00342, Paper 13 (PTAB May 14, 2019).
`
`Moreover, even though Samsung’s Petition relies on a declaration from an expert
`
`different than Google, no additional expert discovery will be needed. In particular,
`
`Samsung’s expert (Dr. Polish) reviewed and agreed with the expert declaration from
`
`Dr. Lipoff supporting Google’s Petition (now instituted). As a result, Dr. Polish’s
`
`5
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`
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`IPR2019-01147
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`declaration is substantially the same as Google’s expert declaration. Assuming
`
`Google does not move to terminate its IPR before its expert is deposed, Samsung
`
`agrees to rely entirely on, and be bound by, the expert declaration and deposition of
`
`Dr. Lipoff.
`
`Further, as a silent understudy, Samsung will file no separate briefs outside of
`
`the consolidated filings and will not request separate oral hearing time.2 As long as
`
`Google is a party, Google will retain responsibility for oral argument (including
`
`telephone hearings and appeals). In addition, as long as Google is a party, Samsung
`
`will not separately file or serve objections or discovery requests, will not receive
`
`separate cross examination or redirect time, will not separately cross examine or
`
`redirect any witness, and agrees that cross examinations will occur within the
`
`timeframe normally allotted to one party without a need for extension in light of the
`
`joinder. Only in the event that the Google 342 IPR is terminated with respect to
`
`Google does Samsung intend to “step into the shoes” of the dismissed petitioner and
`
`materially participate in the joined proceedings.
`
`Thus, the consolidated trial can proceed at the same pace as if Samsung were
`
`not joined and so Samsung’s joinder will not affect the Board’s ability to complete
`
`2 Except for Board-approved motions (if any), or to address said Board-approved
`motions, that do not affect Google or Google’s position.
`6
`
`
`
`IPR2019-01147
`
`its review and final decision within the statutory time limits under 35 U.S.C.
`
`§ 316(a)(11) and 37 C.F.R. § 42.100(c).
`
`Briefing and Discovery Will Be Simplified
`F.
`As stated in Section II.F, supra, Samsung agrees to an “understudy” role and
`
`does not raise any issues that are not already before the Board. In particular,
`
`Samsung agrees that, if joined, the following conditions will apply so long as Google
`
`remains an active party, as previously approved by the Board in similar
`
`circumstances:
`
`(a)
`
`all filings by Samsung in the joined proceeding be consolidated with
`
`the filings of Google, unless a filing solely concerns issues that do not involve
`
`Google;
`
`(b)
`
`Samsung shall not be permitted to raise any new grounds not instituted
`
`by the Board in the Google 342 IPR, or introduce any argument or discovery not
`
`already introduced by Google;
`
`(c)
`
`Samsung shall be bound by any agreement between SpeakWare and
`
`Google concerning discovery and/or depositions;
`
`(d)
`
`for depositions, Samsung shall not receive any direct examination,
`
`cross examination, or redirect time beyond that permitted for Google in this
`
`proceeding alone under 37 C.F.R. § 42.53 or any agreement between SpeakWare
`
`and Google; and
`
`7
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`
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`IPR2019-01147
`
`(e)
`
`Samsung agrees to be bound by the expert deposition and declaration
`
`of Google’s expert, unless Google terminates its IPR prior to its expert’s deposition
`
`or reply declaration.
`
`Samsung would therefore only assume a primary role if Google ceased to
`
`participate in the proceedings. Briefing and discovery will be simplified in that there
`
`will be no need for redundant depositions, briefings, or hearings.
`
`Joinder Will Create No Prejudice To SpeakWare
`G.
`Joinder of Samsung to the Google 342 IPR will not create any additional
`
`burden on SpeakWare. As noted above, as Samsung will be a silent understudy and
`
`the issues are identical, Samsung’s joinder will not affect SpeakWare. In particular,
`
`SpeakWare can merely proceed as it would have had to in any event to respond to
`
`the issues in the already instituted Google 342 IPR. In addition, joinder eliminates
`
`the need for SpeakWare to respond to parallel IPR proceedings on identical grounds
`
`of unpatentability.
`
`IV. CONCLUSION
`For the foregoing reasons, Samsung respectfully requests that the Board grant
`
`its concurrently filed petition for IPR of the ’186 patent and that the proceedings be
`
`joined.
`
`8
`
`
`
`Dated: May 31, 2019
`
`IPR2019-01147
`
`Respectfully submitted,
`
`.
`
`s/Jeffrey Miller/
`Jeffrey Miller (Reg. No. 35,287)
`ARNOLD & PORTER KAYE SCHOLER LLP
`3000 El Camino Real,
`Five Palo Alto Square, Suite 500
`Palo Alto, CA 94306-3807
`jeffrey.miller@arnoldporter.com
`Tel: (650) 319-4538
`
`Jin-Suk Park (Reg. No. 50,678)
`601 Massachusetts Ave., NW
`Washington, DC
`jin.park@arnoldporter.com
`Tel: (202) 942-5000
`
`Counsel for Samsung Electronics Co.,
`Ltd., and Samsung Electronics America,
`Inc.
`
`9
`
`
`
`IPR2019-01147
`
`CERTIFICATE OF SERVICE
`
`I undersigned hereby certifies that a copy of the foregoing Motion for Joinder
`
`was served on May 31, 2019, via FedEx Overnight delivery on the address of record
`
`for the subject patent, counsel of record for the Patent Owner in IPR2019-00342,
`
`and counsel of record for Petitioner in IPR2019-00342 at the following addresses:
`
`Erika H. Arner
`Daniel C. Tucker
`Alexander M. Boyer
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT, & DUNNER LLP
`Two Freedom Square
`11955 Freedom Dr.
`Reston, VA 20190-5675
`erika.arner@finnegan.com
`daniel.tucker@finnegan.com
`alexander.boyer@finnegan.com
`Counsel for Petitioner Google in
`IPR2018-00342
`Sean A. Luner
`Simon Franzini
`DOVEL AND LUNER LLP
`201 Santa Monica Boulevard; Suite 600
`Santa Monica, CA 90401
`Tel: (310) 656-7066
`sean@dovel.com
`simon@dovel.com
`Counsel for Patent Owner SpeakWare in
`IPR2018-00342
`
`10
`
`
`
`Timothy Baumann
`FITCH, EVEN, TABIN &
`FLANNERY, LLP
`120 South LaSalle Street
`Suite 2100
`Chicago, IL 60603-3406
`
`Address of Record for the
`Subject Patent
`
`Date: May 31, 2019
`
`IPR2019-01147
`
`/s/ Jeffrey Miller
`Registration No. 35,287
`jeffrey.miller@arnoldporter.com
`
`11
`
`
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