Samsung Electronics Co., Ltd.v.Affinity Labs of Texas, LLC

Patent Trial and Appeal Board

May 15, 2015

13673391 (P.T.A.B. May. 15, 2015)

Trials@uspto.gov Paper 12
571-272-7822 Entered: May 15, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAMSUNG ELECTRONICS CO., LTD. and
SAMSUNG ELECTRONICS AMERICA, INC.,
Petitioner,

v.

AFFINITY LABS OF TEXAS, LLC,
Patent Owner.
____________

Case IPR2015-00820
Patent 8,532,641 B2
____________

Before KEVIN F. TURNER, LYNNE E. PETTIGREW, and
JON B. TORNQUIST, Administrative Patent Judges.

TORNQUIST, Administrative Patent Judge.

DECISION
Denying Petitioner’s Motion for Joinder
37 C.F.R. § 42.122
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
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Patent 8,532,641 B2

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I. INTRODUCTION
Samsung Electronics Co., Ltd. and Samsung Electronics America,
Inc. (collectively, “Petitioner”) filed a Petition (Paper 7, “Pet.” or “current
Petition”) requesting inter partes review of claims 1–3, 5–7, 9, 10, and 12 of
U.S. Patent No. 8,532,641 (“the ’641 patent”). Petitioner also filed a Motion
for Joinder (Paper 3, “Motion for Joinder”), requesting that the current
Petition be joined with IPR2014-01184. The Motion for Joinder was filed
within one month after institution of trial in IPR2014-01184. See 37 C.F.R.
§ 42.122(b). Patent Owner filed an Opposition to Petitioner’s Motion for
Joinder (Paper 9, “Opp.”), and Petitioner filed a Reply (Paper 11, “Reply”).
For the reasons that follow, we deny Petitioner’s Motion for Joinder.
We also deny the current Petition and do not institute an inter partes review.
II. BACKGROUND
Petitioner previously filed three petitions requesting inter partes
review of claims 1–3 and 5–14 of the ’641 patent. In IPR2014-01181 we
instituted review of claims 8 and 11–14; in IPR2014-01182 we instituted
review of claims 1–3 and 5–14; and in IPR2014-01184 we instituted review
of claims 8, 11, 13, and 14. Thus, we have instituted review of every
challenged claim of the ’641 patent in at least one proceeding and, for some
claims, in three different proceedings.
Petitioner now requests inter partes review of claims 1–3, 5–7, 9, 10,
and 12 of the ’641 patent using a new reference, Hu, in combination with
references Ahn, Nokia, and Galensky, previously relied upon in IPR2014-
01184. Pet. 30–59; Motion for Joinder 2–3. Institution of inter partes
review is barred under 35 U.S.C. § 315(b) when a petition is filed “more
than 1 year after the date on which the petitioner, real party in interest, or
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Patent 8,532,641 B2

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privy of the petitioner is served with a complaint alleging infringement of
the patent.” Petitioner concedes that it was served with a complaint
asserting infringement of the ’641 patent “more than one year” before the
filing date of the current Petition, but contends that the current Petition is
timely in view of its Motion for Joinder. Pet. 7; 35 U.S.C. § 315(b) (noting
that the time limitation set forth in § 315(b) does not apply to a request for
joinder under § 315(c)).
The decision to grant joinder is discretionary, with Petitioner, as the
moving party, bearing the burden to show that joinder is appropriate.
35 U.S.C. § 315(c); 37 C.F.R. § 42.20(c).
III. ANALYSIS
Petitioner contends that joinder is appropriate in this case because
IPR2015-00820 and IPR2014-01184 involve the same patent, parties, and
counsel, and “Patent Owner has already responded to, and the Board has
already analyzed for institution, prior petitions challenging every claim now
at issue in the new Petition.” Motion for Joinder 4. Petitioner further
contends that the Hu reference “was not previously known to Petitioners or
presented to the Board in the prior petitions,” and resolves any concerns the
Board had with respect to the references cited in IPR2014-01184. Id. at 5;
Reply 5.
Patent Owner presents two arguments against joinder. First, Patent
Owner asserts that the statute does not permit the same party to join a
proceeding to which it is already a party. Opp. 3 (citing Skyhawk Techs.
LLC v. L&H Concepts, LLC, Case IPR2014–01485, slip op. at 3–4 (PTAB
Mar. 21, 2015) (Paper 13)). Second, Patent Owner contends that the Motion
for Joinder should be denied because Petitioner simply is seeking a “second
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bite at the apple,” without providing any reasonable explanation as to why it
did not make its arguments with respect to the Hu reference in an earlier,
timely-filed petition. Opp. 8, 12.
With respect to same party joinder, we recognize that different Board
panels have come to contrary positions on this issue. See, e.g., Target Corp.
v. Destination Maternity Corp., Case IPR2014–00508 (PTAB Feb. 12, 2015)
(Paper 31); Skyhawk, slip op. at 3–4. We need not address the issue here,
however, because, even if same party joinder is permissible, we are not
persuaded that joinder is appropriate in this case.
With respect to the substance of the joinder request, we agree with
Patent Owner that Petitioner provides no reasoned justification for the delay
in asserting the grounds based on Hu. In particular, Petitioner articulates no
persuasive reason why, using reasonable efforts, the Hu reference could not
have been identified and relied upon in the earlier, timely-filed petitions.
See Pet. 33 (identifying Hu as “U.S. Pat. Pub. No. 2006/0262103”); Opp. 12
(noting that Hu is a published U.S. patent application). Thus, we do not
consider this to be a case of changed circumstances—such as new claims
being asserted during district court litigation or new threats of
infringement—that would make joinder an equitable remedy. See, e.g.,
Micro Motion, Inc. v. Invensys Sys., Inc., Case IPR2014-01409, slip op. at 14
(PTAB Feb. 18, 2015) (Paper 14) (citing Microsoft Corp. v. Proxyconn, Inc.,
Case IPR2013-00109, slip op. at 3, 5 (PTAB Feb. 25, 2014) (Paper 15)).
This appears, instead, to be a case where Petitioner seeks to use our
Decision to Institute in IPR2014-01184 as a guide to remedy deficiencies in
the earlier filed petition, i.e., a “second bite at the apple.” See Motion for
Joinder 3 (noting that the Hu reference was located “only after the institution
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decision in IPR2014-01184”). Interpreting our rules to allow Petitioner
another chance to argue the unpatentability of the challenged claims would
not lead to the just, speedy, and inexpensive resolution of the proceedings.
See 37 C.F.R. § 42.1(b). To the contrary, joinder of the current proceeding
would require Patent Owner to address new arguments and evidence, and
potentially require additional declarations and witness depositions, all under
a compressed schedule made necessary to accommodate the more advanced
stage of the proceeding in IPR2014–01184. Petitioner’s desire to present
additional grounds directed to claims already the subject of three prior inter
partes review petitions, and directed to claims currently under review in
IPR2014-01182, does not justify the additional burden on Patent Owner, the
additional costs, or the use of judicial resources.
Based on the foregoing, we are not persuaded that Petitioner has
demonstrated that joinder is appropriate. Accordingly, we exercise our
discretion and deny joinder of IPR2015-00820 with IPR2014-01184. The
current Petition is, therefore, time-barred under 35 U.S.C. § 315(b).
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner’s Motion for Joinder is denied;
FURTHER ORDERED that the Petition is denied and no trial is
instituted.

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Patent 8,532,641 B2

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PETITIONER:
J. STEVEN BAUGHMAN
GABRIELLE E. HIGGINS
KATHRYN N. HONG
ROPES & GRAY LLP
steven.baughman@ropesgray.com
gabrielle.higgins@ropesgray.com
Kathryn.Hong@ropesgray.com

PATENT OWNER:
RYAN SCHULTZ
THOMAS DESIMONE
ROBINS KAPLAN LLP
rschultz@robinskaplan.com
tdesimone@robinskaplan.com