ZTE (USA) Inc.v.Adaptix, Inc.

Patent Trial and Appeal Board

Jul 24, 2015

11199586 (P.T.A.B. Jul. 24, 2015)

Trials@uspto.gov Paper 10
571-272-7822 Date Entered: July 24, 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
Denial of Institution of Inter Partes Review
37 C.F.R. § 42.108
Denial of Motion for Joinder
37 C.F.R. § 42.122

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I. BACKGROUND
ZTE Corporation, ZTE (USA) Inc., and T-Mobile USA Inc.
(collectively, “Petitioner”) filed a petition requesting inter partes review of
claims 1, 8–13, 15, 16, 18–21, and 23–30 of U.S. Patent No. 7,454,212 B2
(“the ’212 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 2, “Mot. Join.”), seeking to join with Sony Mobile Communications
(USA) Inc. (“Sony”) v. Adaptix, Inc., Case IPR2014-01525 (“IPR ’1525”).
The motion for joinder was filed within one month of institution of trial in
IPR ’1525. See 37 C.F.R. § 42.122(b). Patent Owner Adaptix, Inc. filed an
opposition to the motion for joinder. Paper 8 (“Opp.”). Petitioner filed a
reply to Patent Owner’s opposition to the motion for joinder. Paper 9
(“Reply”). We have jurisdiction under 35 U.S.C. § 314.
For the reasons that follow, we deny the motion for joinder. We also
deny the current petition and do not institute an inter partes review.

A. Related Proceedings
According to Petitioner, the ’212 patent is involved in the following
lawsuits: Adaptix, Inc. v. AT&T, Inc., No. 6:12-cv-00017 (E.D. Tex.);
Adaptix, Inc. v. Pantech Wireless, Inc., Nos. 6:12-cv-00020 and ’778 (E.D.
Tex.); Adaptix, Inc. v. Cellco Partnership, No. 6:12-cv-00120 (E.D. Tex.);
Adaptix, Inc. v. Blackberry Limited, Nos. 5:14-cv-01380, ’386, and ’387
(N.D. Cal.); Adaptix, Inc. v. Kyocera Corp., Nos. 3:14-cv-02894 and ’2895
(N.D. Cal.); Adaptix, Inc. v. Apple, Inc., Nos. 5:13-cv-01776, ’1777, and
’2023 (N.D. Cal.); Adaptix, Inc. v. AT&T, Inc., No. 5:13-cv-01778 (N.D.
Cal.); Adaptix, Inc. v. Cellco Partnership, No. 5:13-cv-01844 (N.D. Cal.);
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Adaptix, Inc. v. Dell, Inc., No. 5:14-cv-01259 (N.D. Cal.); Adaptix, Inc. v.
Amazon.com, Inc., No. 5:14-cv-01379 (N.D. Cal.); Adaptix, Inc. v. Sony
Mobile Commc’ns, Inc., No. 5:14-cv-01385 (N.D. Cal.); Adaptix, Inc. v.
ASUSTek, No. 5:14-cv-03112 (N.D. Cal.); Adaptix, Inc. v. HTC Corp., Nos.
5:14-cv-02359 and ’2360 (N.D. Cal.); and Adaptix, Inc. v. ZTE Corp., Nos.
5:15-cv-00165, ’00166, ’00167, and ’00168. Pet. 2.

B. Asserted Prior Art
Ritter DE 19800953 C1 July 29, 1999 Ex. 10041
Kapoor US 6,795,424 B1 Sept. 21, 2004 Ex. 1006

C. Asserted Ground of Unpatentability
Petitioner asserts a ground of unpatentability under 35 U.S.C. § 103(a)
over the combination of Kapoor and Ritter against claims 1, 8–13, 15, 16,
18–21, and 23–30. Pet. 19–40.

II. ANALYSIS
A. Joinder Motion

35 U.S.C. § 315 provides in pertinent part (emphasis added):

(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.

1 Exhibit 1005 is an English translation of the German patent document.
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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).
Petitioner seeks to join as a party to the IPR ’1525 proceeding. In IPR
’1525, the Board instituted inter partes review of the ’212 patent on Sony’s
asserted ground of unpatentability of claims 1, 8–13, 15, 16, 18–21, and 23–
30 as being obvious over Kapoor and Ritter. IPR ’1525, slip op. at 13
(PTAB Apr. 8, 2015) (Paper 15). In this proceeding, Petitioner challenges
the same claims of the ’212 patent based on the same ground of obviousness
over Kapoor and Ritter. Petitioner argues that joinder should be granted “as
a matter of right” because Petitioner has filed the “identical petition” with
respect to the instituted ground in IPR ’1525. Mot. Join. 6.
To the contrary, Petitioner has not filed an “identical petition.” The
petition in IPR ’1525 relied on the proffered expert testimony of Professor
Robert Akl. See IPR ’1525 Paper 5 (corrected petition) passim; Ex. 1007
(Akl Decl.). In this proceeding, Petitioner does not file as an exhibit and
rely on the Akl Declaration, or a similar declaration by Professor Akl,
instead relying on the testimony of Dr. Tim A. Williams. See Petition
passim; Ex. 1003 (Williams Decl.). Petitioner’s motion does not address
that substantive difference between the petitions.
Petitioner submits that, in the event of being joined as a party to the
IPR ’1525 trial, it “will rely upon Sony’s expert, and will not offer additional
expert testimony unless Sony terminates its involvement in the IPR.” Mot.
Join. 8. Petitioner neglects to mention, however, that in this proceeding
Petitioner relies on a different declarant in support of the proposed ground of
unpatentability. Routine discovery in an inter partes review includes cross
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examination of affidavit testimony. 37 C.F.R. § 42.51(b)(1)(ii). If we were
to determine that the instant Petition meets the “reasonable likelihood”
threshold required by 35 U.S.C. § 314(a), Patent Owner should have the
opportunity to cross-examine Petitioner’s proffered expert. In this regard,
Patent Owner argues that the new declaration “necessarily introduces a new
expert declarant and potentially raises additional issues, and ‘the exact same
evidence’ is not relied upon by Petitioners.” Opp. 5 (quoting Mot. Join. 4).
Petitioner’s Motion does not explain why a declaration from a different
proffered expert was thought to be necessary for its Petition.
As Patent Owner also notes,” the deposition of Sony’s expert
declarant in the [IPR ’1525 trial] has already occurred” (Opp. 7). Indeed,
the patent owner response in the IPR ’1525 proceeding (Paper 27) was filed
on June 23, 2015. We agree with Patent Owner that the new issues raised by
reliance on the different declarant in the instant Petition would adversely
impact the IPR ’1525 trial. Opp. 7–8.
We agree also with Patent Owner (Opp. 6) that we cannot deny
Petitioner’s motion but grant the instant Petition; thus, contrary to
Petitioner’s allegation (Mot. Join. 4–5), there could be no inefficiency due to
“duplication of effort” in two trials based on the same ground of
unpatentability. Absent joinder, Petitioner is barred from inter partes review
of the ’212 patent because it was served with a complaint alleging
infringement of the patent on May 28, 2013, more than one year prior to the
filing of the instant Petition (May 8, 2015). Opp. 6; Mot. Join. 2. See 35
U.S.C. § 315(b) (setting forth that an inter partes review may not be
instituted if the petition requesting the proceeding is filed more than one
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year after the date on which the petitioner is served with a complaint
alleging infringement of the patent).
Petitioner provides insufficient reasons in its Motion for joinder with
IPR ’1525. The only reason alleged in the Motion that might weigh in
support of joinder is that Petitioner would “be forced to litigate validity in
the district court proceeding under the more demanding burden of clear and
convincing evidence” in the event that “Sony settles its case” and the IPR
’1525 proceeding might “not reach a final written decision.” Mot. Join. 5.
The possibility that Sony might withdraw from the IPR ’1525 proceeding,
along with the possibility that Sony might have otherwise prevailed in its
challenge with respect to the ’212 patent, is weighed against the virtual
certainty of having to reschedule the ’1525 trial proceeding should Petitioner
join as a party. Moreover, Petitioner does not indicate why the fact that
Sony (or any other party charged with infringement) might withdraw from a
challenge of the ’212 patent seemingly went unappreciated for more than a
year after Petitioner was served with a complaint alleging infringement of
the patent.
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
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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, 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.

B. Denial of Inter Partes Review
Petitioner admits that it was served with a complaint alleging
infringement of the ’212 patent more than one year prior to the date of filing
of the instant Petition. Mot. Join. 2. Accordingly, in 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).

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 ’212 patent, we do not institute review as to any of the
challenged claims.

IV. ORDER
In view of the foregoing, it is
ORDERED that Petitioner’s motion for joinder is denied; and
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FURTHER ORDERED that the petition is denied and no trial is
instituted.
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PETITIONER:
Steve Moore
steve.moore@pillsburylaw.com

Barry Shelton
barry.shelton@pillsburylaw.com

Richard Thill
richard.thill@pillsburylaw.com

Chad Walters
chad.walters@bakerbotts.com
Brian Nash
brian.nash@pillsburylaw.com

PATENT OWNER:

Amedeo Ferraro
aferraro@martinferraro.com

Wesley Meinerding
wmeinerding@martinferraro.com