In its Decision, the Board instituted inter partes review of claims 58 and 63 of the ’398 Patent and granted the Motion for Joinder. The ’398 Patent relates to systems and methods for providing multimedia content to and from various devices, specifically allowing cellular networks to provide users access to information from the Internet. Petitioner only challenged claims 58 and 63 of the ’398 Patent, which both depend from independent claim 15, alleging that both claims are unpatentable as obvious in view of Palin, Karaoguz, and Seaman.
The Board began with claim construction, stating that claims are given their broadest reasonable construction in light of the specification. The Board found that all three disputed claim terms – wireless terminal, HDMI, and wireless communication network – should be construed as they were in IPR2013-00571.
Turning then to the obviousness claims, the Board discussed each of the references. The Board found that Karaoguz discloses all of the limitations of independent claim 15 and dependent claim 55 (which claim 58 depends from). Further, the Board held that Seaman discloses the additional limitation in claim 58. The Board also found that the combination of Karaoguz and Seaman discloses every limitation of claim 63 based upon Petitioner’s reasoning.
The Board then turned to the Motion for Joinder with IPR2013-00571. The Board stated that the AIA permits joinder of parties in like review proceedings. The Board noted that while 35 U.S.C. § 315(b) bars institution of a petition for inter partes review when the petition is filed more than one year after the petitioner is served with a complaint alleging infringement of the patent, the one-year time bar does not apply to a request for joinder. In this case, Petitioner was served with a complaint asserting infringement of the ’398 Patent more than one year before filing the Petition, therefore, in the absence of joinder, the Petitioner would be barred.
A decision on joinder is discretionary, and the Board must exercise its discretion keeping in mind that the rules must be construed to secure the just, speedy, and inexpensive resolution of every proceeding. Patent Owner argued that the Rules do not discuss joinder of additional grounds by the same party, but the Board noted that it has already allowed joinder of additional grounds by the same party. The Board stated that at a minimum, the instant Petition involves the same patent as in IPR2013-00571, therefore, the Board will consolidate the matters because it will not delay the resolution of either proceeding, and will help to the secure the just, speedy, and inexpensive resolution of the proceedings because the only additional matter that is instituted is the limitation regarding HDMI, which is already being discussed in other related proceedings. Further, the Board already adjusted the Scheduling Order in IPR2013-00571 to allow for a delayed Patent Owner response and has ordered Petitioner to pay all future costs associated with making its expert available for cross-examination at a location convenient for counsel for Patent Owner.
Samsung Electronics Co., Ltd. v. Virginia Innovation Sciences, Inc., IPR2014-00557
Paper 10: Decision to Institute and Grant of Motion for Joinder
Dated: June 13, 2014
Patent 8,135,398 B2
Before: Michael W. Kim, Brian J. McNamara, and Matthew R. Clements
Written by: Kim
Related Proceedings: Virginia Innovation Sciences, Inc. v. Samsung Electronics Co., Ltd., No. 2:12-cv-00548-MSD-DEM (E.D. Va.); IPR2013-00569; IPR2013-00570; IPR2013-00571