Samsung Electronics Co., Ltd.v.Arendi S.A.R.L.

Patent Trial and Appeal Board

Oct 2, 2014

09923134 (P.T.A.B. Oct. 2, 2014)

Trials@uspto.gov Paper 11
Tel: 571-272-7822 Entered: October 2, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
SAMSUNG ELECTRONICS CO., LTD.,
SAMSUNG ELECTRONICS AMERICA, INC., and
SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
Petitioner,
v.
ARENDI S.A.R.L.,
Patent Owner.
_______________

Case IPR2014-01144
Patent 7,496,854 B2
_______________

Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
TREVOR M. JEFFERSON, Administrative Patent Judges.

JEFFERSON, Administrative Patent Judge.

DECISION
Denying Inter Partes Review and Joinder
37 C.F.R. §§ 42.108 and 42.122(b)

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I. INTRODUCTION
A. Background
Samsung Electronics Co. Ltd., Samsung Electronics America, Inc., and
Samsung Telecommunications America, LLC (collectively, “Petitioner”) filed a
Petition (Paper 1, “Pet.”) requesting inter partes review of claims 1–12 and 36–49
of U.S. Patent No. 7,496,854 B2 (Ex. 1101, “the ’854 patent”) under 35 U.S.C.
§§ 311–319. Pet 1. Petitioner also filed a motion for joinder (Paper 3, “Mot.”),
seeking to join with Apple Inc. v. Arendi S.A.R.L., Case IPR2014-00207 (PTAB)
(“IPR2014-00207”).
Arendi S.A.R.L. (“Patent Owner”) filed an Opposition to Petitioner’s motion
for joinder (Paper 7, “Opp.”). Per our Order setting an expedited date for filing the
Preliminary Response (Paper 9, “Order”), Patent Owner filed a Preliminary
Response (Paper 10, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C.
§ 314.
For the reasons set forth below, we deny Petitioner’s motion for joinder and
do not institute an inter partes review as to the challenged claims of the ’854
patent.
B. Related Matters
Patent Owner sued Petitioner for infringement of the ’854 patent in Arendi
S.A.R.L. v. Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and
Samsung Telecommunications America, LLC, 1:2012-cv-01598 (D. Del.). Pet. 1;
Paper 5, 3. The ’854 patent is also subject to inter partes review in Apple Inc. v.
Arendi S.A.R.L., Case IPR2014-00206 (PTAB) and IPR2014-00207. Pet. 1; Paper
5, 3.
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Petitioner also filed a Petition for inter partes review of the ’854 patent in
IPR2014-01143. Paper 5, 3.
C. References Relied Upon
Petitioner relies upon the following prior art references (Pet. 4):
References Exhibit
U.S. Patent No. 6,085,206 (“Domini”) Ex. 1104
U.S. Patent No. 6,377,965 (“Hachamovitch”) Ex. 1105

D. The Alleged Grounds of Unpatentability
Petitioner contends that the challenged claims are unpatentable based on the
following grounds (Pet. 4):
References Basis Claims Challenged
Domini § 102(e) 1–12, 36–38, 40–45, and 49
Hachamovitch § 102(e) 1–12 and 36–49
Hachamovitch § 103(a) 3–5, 9–11, 38–41, and 45–48

II. ANALYSIS
A. Motion for Joinder
We first address Petitioner’s Motion for Joinder under 35 U.S.C. § 315(c)
and 37 C.F.R. § 42.122(b) as a party to IPR2014-00207. Petitioner timely filed its
motion for joinder within one month of the institution of inter partes review in
IPR2014-00207. See 37 C.F.R. § 42.122(b).
The standard for joinder of parties in related review proceedings is set forth
in 35 U.S.C. § 315(c), which provides:
(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
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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.

Although 35 U.S.C. § 315(b) bars inter partes review when a petition is filed
more than one year after the petitioner (or the petitioner’s real party-in-interest or
privy) is served with a complaint alleging infringement of the patent (see 37 C.F.R.
§ 42.101(b)), the one-year time bar does not apply to a request for joinder. 35
U.S.C. § 315(b) (stating that “[t]he time limitation set forth in the preceding
sentence shall not apply to a request for joinder under subsection (c)” of 35 U.S.C.
§ 315); 37 C.F.R. § 42.122(b).
In the present case, Petitioner was served with a complaint asserting
infringement of the ʼ854 patent more than one year prior to filing the Petition in
this proceeding. Mot. 2. Thus, absent joinder of this proceeding with IPR2014-
00207, the Petition would be barred.
As a moving party, Petitioner has the burden of proof in establishing
entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A motion for
joinder should: (1) set forth the 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) specifically address how briefing and discovery may be simplified. See e.g.,
Kyocera Corp. v. Softview LLC, Case IPR2013-00004, slip op. at 4 (PTAB Apr.
24, 2013) (Paper 15); FAQ H5 on the Board’s website at
http://www.uspto.gov/ip/boards/bpai/prps.jsp.
Petitioner’s motion asserts that joinder with IPR2014-00207 is appropriate
because the instant Petition “involves the same patent, the same claims, the same
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prior art, and the same single instituted ground (the Domini Ground)” as involved
in IPR2014-00207. Mot. 6. Petitioner also submits that the claim charts in the
instant Petition are “substantially identical” to the claim charts contained in the
IPR2014-00207 Petition with respect to the Domini ground of unpatentability.
Mot. 3, 6. Petitioner submits, further, that the instant Petition “adopts the
reasoning and rationale of the Board” and the IPR2014-00207 Petition with respect
to the Domini ground. Mot. 6. Petitioner alleges that it presents no new issues that
might complicate or delay the IPR2014-00207 proceeding. Id.
Petitioner’s motion for joinder fails to specify the differences between its
Petition and the Petition in IPR2014-00207. Petitioner also fails to state what is
meant by “substantially identical” claim charts to those in the IPR2014-00207
Petition. See Mot. 3, 6. Despite Petitioner’s allegations that no new issues are
presented in its Petition, the Petition relies on the testimony of Dr. Paul Clark (Ex.
1107), which introduces argument and evidence that was not presented in
IPR2014-00207 (Pet. 5–9, 12–14). Opp. 3–4. Thus, joinder of the present Petition
with IPR2014-00207 would introduce new evidence and argument into the joint
proceeding.
Petitioner’s motion makes no specific changes or suggestions regarding the
schedule in IPR2014-00207. Petitioner alleges that “there appears to be no
discernable impact on the trial schedule for” IPR2014-00207 because of the
“specific ways” Petitioner proposes to simplify briefing and discovery. Mot. 8.
Petitioner fails to set forth how briefing and discovery are simplified, other than
suggesting seven additional pages be allotted to Petitioner and Patent Owner to
address separate issues. Id. at 8–9. In addition, the cases Petitioner relies on to
support its proposed seven additional pages for briefing did not introduce a new
expert or arguments into the proceeding. See Mot. 9; Opp. 3 n.4, 4–5 (discussing
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Dell Inc. v. Network-1 Security Solutions, Inc., Case IPR2013-00385 (PTAB July
29, 2013) (Paper 17) and Motorola Mobility LLC v. SoftView LLC, Case IPR2013-
00256 (PTAB June 20, 2013) (Paper 10)).
Petitioner also states that it will work with the petitioner in IPR2014-00207
to “coordinate on expert testimony to minimize redundancy” (Mot. 9) and “to
manage the questioning at depositions, and presentations at the hearing, to manage
within the time normally allotted, and to avoid redundancy” (Mot. 8). Petitioner is
silent as to whether the petitioner in IPR2014-00207 has agreed to work together or
supports Petitioner’s proposed additional pages for briefing.
Petitioner indicates that “absent joinder, the joint stipulation and
corresponding stay ordered [in the related District Court action] will preclude
Petitioner from raising in the District Court an invalidity challenge based on the
Domini Ground instituted in [IPR2014-00207].” Mot. 6. Petitioner has not
provided a supporting exhibit containing the terms of “the joint stipulation and
corresponding stay.” Petitioner has not demonstrated sufficiently that the
circumstances of this case support joinder.
In addition, Petitioner was served with a complaint by Patent Owner alleging
infringement of the ’854 patent on December 4, 2012. Prelim. Resp. 1 (citing Ex.
2001 (Complaint); Ex. 2002 (Proof of Service)). Assuming that Petitioner was not
served with a complaint based on alleged infringement of the patent earlier than
December 4, 2012, Petitioner could have filed a petition for inter partes review of
the ’854 patent, prior to the expiration of the one-year time under 35 U.S.C.
§ 315(b), but did not do so.
Petitioner submits that it is presenting declaration evidence from its own
expert “in the event that the petitioners in [IPR2014-00207] settle with the patent
owner, and terminate out of the joined proceeding prior to a final written decision.”
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Mot. 6 n.3, 8. Petitioner does not indicate, however, why another expert might be
required in the event of settlement by the petitioner in IPR2014-00207. Petitioner
argues, further, that it is submitting declaration evidence from its own expert “to
present non-redundant rationale further supporting the instituted ground.” Id.
Petitioner does not explain what might constitute “non-redundant rationale,” nor
does it indicate why such may be needed with respect to IPR2014-00207.
Joinder may be authorized when warranted, but the decision to grant joinder
is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b). When exercising that
discretion, the Board is mindful that patent trial regulations, including the rules for
joinder, must be construed to secure the just, speedy, and inexpensive resolution of
every proceeding. 37 C.F.R. § 42.1(b). As indicated in the legislative history, the
Board will determine whether to grant joinder on a case-by-case basis, taking into
account the particular facts of each case. See 157 Cong. Rec. S1376 (daily ed.
Mar. 8, 2011) (statement of Sen. Kyl) (when determining whether and when to
allow joinder, the Office may consider factors including the breadth or unusualness
of the claim scope, claim construction issues, and consent of the patent owner).
In view of the facts and circumstances of this case, we find that Petitioner
has not met its burden to show that joinder is appropriate, consistent with the goal
of securing the just, speedy, and inexpensive resolution of every proceeding.
Petitioner’s motion for joinder is, thus, denied.
B. Denial of Inter Partes Review
Petitioner admits that it was served with a complaint alleging infringement
of the ’854 patent more than one year prior to the date of filing of the instant
Petition. Mot. 2. Accordingly, in view of the denial of the requested relief of
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joinder with IPR2014-00207, institution of an inter partes review as requested by
Petitioner is barred by statute. 35 U.S.C. § 315(b); see 37 C.F.R. § 42.101(b).

III. CONCLUSION
For the foregoing reasons, we deny Petitioner’s motion for joinder. Because
Petitioner is barred under 35 U.S.C. § 315(b) from inter partes review of the ’854
patent, we do not institute review as to any of the challenged claims.

IV. ORDER
For the reasons given, it is
ORDERED that Petitioner’s Motion for Joinder is denied; and
FURTHER ORDERED that the Petition is denied as to all challenged claims
and all grounds and that no trial is instituted.

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Petitioner:

Andrea Reister
areister@cov.com

Gregory Discher
gdischer@cov.com

Patent Owner:

Robert Asher
rasher@sunsteinlaw.com

Bruce Sunstein
bsunstein@sunsteinlaw.com
John Stickevers
jstickevers@sunsteinlaw.com