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

Patent Trial and Appeal Board

Oct 2, 2014

12182048 (P.T.A.B. Oct. 2, 2014)

Trials@uspto.gov Paper 11
571-272-7822 Date 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 IPR2014-01142
Patent 7,917,843 B2
____________

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

BLANKENSHIP, Administrative Patent Judge.

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

I. BACKGROUND
Samsung Electronics Co. Ltd., Samsung Electronics America, Inc.,
and Samsung Telecommunications America, LLC (collectively,
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“Petitioner”) filed a petition requesting inter partes review of claims 1, 2, 8,
14–17, 20, 21, 23, 24, 30, 36–39, 42, and 43 of U.S. Patent No. 7,917,843
B2 (“the ’843 patent”) (Ex. 1001) under 35 U.S.C. §§ 311–319. Paper 1
(Petition, or “Pet.”). With the Petition, Petitioner filed a motion for joinder
(Paper 3, “Mot.”), seeking to join with Apple Inc. v. Arendi S.A.R.L., Case
IPR2014-00208. Arendi S.A.R.L. (“Patent Owner”) filed a preliminary
response (Paper 10, “Prelim. Resp.”), as permitted by 37 C.F.R. § 42.107,
and an opposition to the motion for joinder (Paper 7, “Opp,”). Petitioner
filed a reply to the motion for joinder. Paper 8, “Reply.” We have
jurisdiction under 35 U.S.C. § 314.
For the reasons that follow, we deny the motion for joinder and do not
institute an inter partes review as to any of the challenged claims of the ’843
patent.

Related Proceeding
According to Petitioner, the ’843 patent is involved in the following
lawsuit: Arendi S.A.R.L. v. Samsung Electronics Co., No. 12-1598 (D. Del.).
Pet. 1. The ’843 patent has also been challenged in the following case:
Apple Inc. v. Arendi S.A.R.L., Case IPR2014–00208 (PTAB).

Prior Art
Pandit US 5,859,636 Jan. 12, 1999 (Ex. 1005)

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Asserted Ground of Unpatentability
Petitioner asserts the following ground of unpatentability (Pet. 4):

Reference

Basis (35 U.S.C.)

Claims

Pandit

§ 103(a)
1, 2, 8, 14–17, 20, 21,
23, 24, 30,
36–39, 42, and 43

II. ANALYSIS
Decision on Motion for Joinder
Petitioner submits a motion for joinder, under 37 C.F.R. § 42.122,
with IPR2014-00208. The Motion for Joinder was filed within one month
after institution of a trial in IPR2014-00208, as required by 37 C.F.R.
§ 42.122(b).
The AIA permits joinder of parties in like review proceedings. The
statutory provision governing joinder of inter partes review proceedings is
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 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.

35 U.S.C. § 315(b) bars institution of an inter partes review when the
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. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b).
However, the one–year time bar does not apply to a request for joinder. 35
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U.S.C. § 315(b) (final sentence) (“The time limitation set forth in the
preceding sentence shall not apply to a request for joinder under subsection
(c).”); 37 C.F.R. § 42.122(b). Petitioner was served with a complaint
asserting infringement of the ʼ843 patent more than one year prior to filing
the Petition. Mot. 2. Thus, absent joinder of this proceeding with IPR2014-
00208, 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.
In its Motion, Petitioner asserts that joinder with IPR2014-00208 is
appropriate because the instant Petition “involves the same patent, the same
claims, the same prior art, and the same single instituted ground (the Pandit
Ground)” as involved in IPR2014-00208. Mot. 5. Petitioner submits that
the claim charts in the instant Petition are “substantially identical” to the
claim charts contained in the IPR2014-00208 Petition with respect to the
Pandit ground of unpatentability. Id. Petitioner submits, further, that the
instant Petition “adopts the reasoning and rationale of the Board” and the
IPR2014-00208 Petition such that no new issues are presented that might
complicate or delay an existing proceeding. Id.
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Petitioner in its Motion does not specify the differences in its Petition
with respect to the Petition in IPR2014-00208. Nor does Petitioner indicate
what it means by “substantially” identical claim charts. Further, arguments
in the Petition (e.g., Pet. 22–23) rely on the testimony of Dr. Paul C. Clark
(Ex. 1007), who did not offer testimony in IPR2014-00208, thus,
introducing arguments that are not present in IPR2014-00208. This new
evidence (and new arguments) would be introduced into a joint proceeding.
Petitioner in its Motion does not suggest any specific changes to the
schedule in IPR2014-00208. Petitioner, instead, merely alleges that “there
appears to be no discernable impact on the trial schedule” with respect to the
other proceeding. Mot. 7. Nor does Petitioner set forth how briefing and
discovery may be simplified, other than suggesting that it have seven
additional pages for papers filed. Id. at 8. Petitioner, further, submits no
evidence that the petitioner in IPR2014-00208 has agreed to, or will, “work
together” with Petitioner “to manage the questioning at depositions, and
presentations at the hearing, to manage within the time normally allotted,
and to avoid redundancy.” Id.
Petitioner was served with a complaint by Patent Owner alleging
infringement of the ’843 patent on December 4, 2012. Prelim. Resp. 9; Ex.
2002 (Complaint); Ex. 2003 (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 ’843 patent, prior to the expiration of the one-year time
under 35 U.S.C. § 315(b), but did not do so. Rather, Petitioner filed its
Petition on July 11, 2014. Petitioner indicates that “absent joinder, the joint
stipulation and corresponding stay” ordered in the related district court
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actions will preclude Petitioner from raising “an invalidity challenge based
on the Pandit Ground” instituted in IPR2014-00208. 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.
Petitioner submits that it is presenting declaration evidence from its
own expert “in the event that the petitioners in [IPR2014-00208] settle with
the patent owner, and terminate out of the joined proceeding prior to a final
written decision.” Mot. 8. Petitioner does not indicate, however, why
another expert might be required in the event of settlement by the petitioner
in IPR2014-00208. Petitioner argues, further, that it is submitting the
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 IPR2014-00208.
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).
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In view of the facts and circumstances of this case, Petitioner, as
movant, has not met its burden to show why 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.

Denial of Inter Partes Review
Petitioner admits that it was served with a complaint alleging
infringement of the ’843 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 joinder with IPR2014-00208, institution of an inter partes
review as requested by Petitioner is barred by statute. 35 U.S.C. § 315(b);
see also 37 C.F.R. § 42.101(b).

III. CONCLUSION
For the foregoing reasons, we deny Petitioner’s motion for joinder.
Because Petitioner is barred by 35 U.S.C. § 315(b) from an inter partes
review of the ’843 patent, we do not institute review as to any of the
challenged claims.

IV. ORDER
In consideration of the foregoing, it is
ORDERED that the motion for joinder is denied; and
ORDERED that the petition is denied as to all challenged claims and
no trial is instituted.
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PETITIONER:

Andrea Reister
Gregory Discher
Covington & Burling LLP
areister@cov.com
gdischer@cov.com

PATENT OWNER:

Robert M. Asher
Bruce D. Sunstein
John Stickevers
Dorothy Wu
Sunstein Kann Murphy & Timbers LLP
rasher@sunsteinlaw.com
bsunstein@sunsteinlaw.com
jstickevers@sunsteinlaw.com
dwu@sunsteinlaw.com