Trials@uspto.gov
`571-272-7822
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` Paper 8
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` Entered: November 23, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`____________
`
`Case IPR2020-01119
`Patent 7,821,425
`____________
`
`
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`35 U.S.C. § 314
`37 C.F.R. § 42.122(b)
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`
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`
`571-272-7822
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` Paper 8
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`
`
` Entered: November 23, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`____________
`
`Case IPR2020-01119
`Patent 7,821,425
`____________
`
`
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`35 U.S.C. § 314
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`IPR2020-01119
`Patent 7,821,425 B2
`
`
`I.
`
`INTRODUCTION
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`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`
`(collectively “Petitioner”) filed a Petition requesting inter partes review of
`
`claims 140 of U.S. Patent No. 7,821,425 B2 (Ex. 1001, “the ’425 patent”).
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`Paper 1 (“Pet.”). Petitioner also filed a Motion for Joinder seeking joinder
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`of this proceeding with Apple Inc. v. Neodron Ltd., Case No. IPR2020-
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`00778 (the “Apple IPR”). Paper 4 (“Mot.”). Neodron Ltd. (“Patent
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`Owner”) did not file either a Preliminary Response or an Opposition to the
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`Motion for Joinder. For the reasons that follow, we institute inter partes
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`review, and grant Petitioner’s Motion for Joinder.
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`II.
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`INSTITUTION OF INTER PARTES REVIEW
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`We instituted inter partes review in IPR2020-00778 on all challenged
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`claims and on all the asserted grounds of unpatentability (Apple IPR, Paper
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`10 (Decision on Institution)). The Petition in this proceeding is a “carbon
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`copy” of the petition in the Apple IPR (Mot. 1) and challenges the same
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`claims and asserts the same grounds as those we instituted in the Apple IPR
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`(id. at 12). Petitioner also presents testimony from the same declarant
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`relied on in the Apple IPR. Ex. 1003 (Declaration of Dr. Tony Givargis).
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`In view of the identicalness of the issues in the instant Petition and in
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`the Apple IPR, and for the same reasons stated in our Decision on Institution
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`in the Apple IPR, we institute inter partes review in this proceeding on the
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`2
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`IPR2020-01119
`Patent 7,821,425 B2
`
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`grounds presented in the Petition.
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`III. GRANT OF MOTION FOR JOINDER
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`
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`Joinder in inter partes review is subject to the provisions of 35 U.S.C.
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`§ 315(c):
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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
`parties review under section 314.
`
`
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`As the moving party, Petitioner bears the burden of proving that it is
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`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
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`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
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`grounds of unpatentability asserted in the petition; and (3) explain what
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`impact (if any) joinder would have on the trial schedule for the existing
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`review. See Kyocera Corp. v. Softview LLC, Case IPR2013-00004, slip op.
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`at 4 (PTAB Apr. 24, 2013) (Paper 15).
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`
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`Petitioner has filed a timely Motion in accordance with 35 U.S.C.
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`§ 315(c). Petitioner also has met its burden of showing that joinder is
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`appropriate. For instance, the Petition here is substantively identical to the
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`petition in the Apple IPR. Mot. 5. The evidence also is identical, including
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`the reliance on the same declaration of Dr. Givargis. Id.
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`3
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`IPR2020-01119
`Patent 7,821,425 B2
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`Petitioner further has shown that the trial schedule will not be affected
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`by joinder. Mot. 6, 78. No changes in the schedule are anticipated or
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`necessary, and the limited participation, if at all, of Petitioner will not impact
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`the timeline of the ongoing trial. Id. at 6. Petitioner has agreed to a
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`“second-chair” role, as long as the petitioner in the Apple IPR remains in the
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`proceeding, which will not affect the ongoing Apple IPR. Id. at 6.
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`In view of the foregoing, it is
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`IV. ORDER
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`ORDERED that IPR2020-01119 is hereby instituted on all challenged
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`claims and asserted grounds;
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`
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`FURTHER ORDERED that Petitioner’s Motion for Joinder with
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`IPR2020-00778 is granted;
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`
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`FURTHER ORDERED that the Scheduling Order entered in
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`IPR2020-00778 and schedule changes agreed-to by the parties in IPR2020-
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`00778 shall govern the schedule of the joined proceeding;
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`
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`FURTHER ORDERED that, throughout the joined proceeding, all
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`filings in IPR2020-00778 will be consolidated and no filing by the Samsung
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`Petitioner, alone, will be allowed without prior authorization by the Board;
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`FURTHER ORDERED that a copy of this Decision will be entered
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`into the record of IPR2020-00778;
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`4
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`IPR2020-01119
`Patent 7,821,425 B2
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`FURTHER ORDERED that the case caption in IPR2020-00778, from
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`now on, shall reflect joinder with this proceeding in accordance with the
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`attached example.
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`5
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`IPR2020-01119
`Patent 7,821,425 B2
`
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`For PETITIONER:
`
`Marc Pensabene (Lead Counsel)
`John Kappos (Back-up Counsel)
`Brian Cook (Back-up Counsel)
`O’MELVENY & MYERS LLP
`mpensabene@omm.com
`jkappos@omm.com
`bcook@omm.com
`
`Adam P. Seitz (Lead Counsel)
`Paul R. Hart (Back-Up Counsel)
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`paul.hart@eriseip.com
`
`For PATENT OWNER:
`
`Kent Shum (Lead Counsel)
`Neil A. Rubin (Back-up Counsel)
`RUSS AUTUST & KABAT
`kshum@raklaw.com
`nrubin@raklaw.com
`rak_neodron@raklaw.com
`
`
`
`6
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`IPR2020-01119
`Patent 7,821,425 B2
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`Example of Case Caption for Joined Proceeding
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., MICROSOFT CORPORATION,
`SAMSUNG ELECTRONICS CO., LTD, and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`NEODRON, LTD.,
`Patent Owner.
`____________
`
`Case IPR2020-007781
`Patent 7,821,425 B2
`____________
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`1 Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`filed a petition and a motion for joinder in IPR2020-01119, both of which
`have been granted. Therefore the caption here has been updated to reflect
`that these Samsung entities are joined as Petitioner in this proceeding.
`7
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