ZTE CORPORATION, ZTE (USA) INC., and T-MOBILE USA INC.v.Adaptix, Inc.

Patent Trial and Appeal BoardOct 16, 2015

11199586 (P.T.A.B. Oct. 16, 2015)

Trials@uspto.gov Paper 12 571-272-7822 Date Entered: October 16, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ ZTE CORPORATION, ZTE (USA) INC., and T-MOBILE USA INC., Petitioner, v. ADAPTIX, INC., Patent Owner. ____________ Case IPR2015-01184 Patent 7,454,212 B2 ____________ Before HOWARD B. BLANKENSHIP, TREVOR M. JEFFERSON, and JUSTIN BUSCH, Administrative Patent Judges. BLANKENSHIP, Administrative Patent Judge. DECISION Request for Rehearing 37 C.F.R. § 42.71(d) IPR2015-01184 Patent 7,454,212 B2 2 ZTE Corporation, ZTE (USA) Inc., and T-Mobile USA Inc. (collectively, “Petitioner”) filed a Request for Rehearing (Paper 11, “Req. Reh’g”) of our decision entered July 24, 2015 (Paper 10, “Decision”). In that Decision, we denied Petitioner’s motion for joinder and denied the petition (Paper 1, “Petition”) because the petition was barred by statute. Petitioner was served with a complaint alleging infringement of the subject patent more than one year prior to the date of filing the Petition. Decision 7–8; 35 U.S.C. § 315(b). A request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). Petitioner’s Request for Rehearing does not point out any matter that we misapprehended or overlooked in the Decision. A request for rehearing is not an opportunity simply to express disagreement with a decision. Petitioner argues, again, that a “properly filed” petition under 35 U.S.C. § 311 is not subject to the § 315(b) time bar if it is merely “accompanied” by a request for joinder. Req. Reh’g 7–8. That is, Petitioner submits that the one-year bar cannot apply to a petition even when an accompanying request for joinder is denied. See id. at 7 (“regardless of whether the motion for joinder is granted”). Manifestly, we disagree with the premise that mere accompaniment of a request for joinder with a petition nullifies the § 315(b) time bar. See Decision 7 (“[I]n view of the denial of the requested relief of joinder with IPR ’1525, 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).”). Petitioner’s interpretation of the joinder provision of 35 U.S.C. § 315(c) would render the time bar of § 315(b) itself a nullity. Under that IPR2015-01184 Patent 7,454,212 B2 3 interpretation, to circumvent a § 315(b) time bar, a petitioner would only need file a petition along with a motion to join with some proceeding, with full knowledge and expectation that the motion would be denied. Petitioner has not identified any Board decision where a motion for joinder that accompanied a petition was denied, yet, for the reason that the motion accompanied the petition, a § 315(b) time bar was held ineffective. The case of Dell Inc. v. Network-1 Security Solutions, Inc., which Petitioner cites at page 8 of the Request for Rehearing, does not provide support for Petitioner’s interpretation of the relevant statutes. In Dell, the motion for joinder was granted. Case IPR2013-00385, slip op. at 2 (PTAB July 19, 2013) (Paper 17). Petitioner’s request for rehearing is denied. IPR2015-01184 Patent 7,454,212 B2 4 PETITIONER: Steve Moore Barry Shelton Richard Thill Brian Nash Pillsbury Winthrop Shaw Pittman LLP steve.moore@pillsburylaw.com barry.shelton@pillsburylaw.com richard.thill@pillsburylaw.com brian.nash@pillsburylaw.com Chad Walters BAKER BOTTS LLP chad.walters@bakerbotts.com PATENT OWNER: Amedeo Ferraro Wesley Meinerding MARTIN & FERRARO, LLP aferraro@martinferraro.com wmeinerding@martinferraro.com

ZTE CORPORATION, ZTE (USA) INC., and T-MOBILE USA INC. v. Adaptix, Inc.