Paper No. __
`IPR2015-00334
`Patent 8,050,652
`
`
`
`
`Filed on behalf of: LG Electronics, Inc. et al.
`By: Doris Johnson Hines
`
`Jonathan R.K. Stroud
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`E-mail: dori.hines@finnegan.com
`
` jonathan.stroud@finnegan.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________________
`
`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC., and LG
`ELECTRONICS MOBILECOMM U.S.A., INC.
`
`Petitioner
`
`v.
`
`BLACK HILLS MEDIA, LLC
`Patent Owner
`____________________________________________
`
`IPR2015-00334
`Patent 8,050,652
`____________________________________________
`
`MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
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`
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`IPR2015-00334
`Patent 8,050,652
`
`
`
`
`Filed on behalf of: LG Electronics, Inc. et al.
`By: Doris Johnson Hines
`
`Jonathan R.K. Stroud
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`E-mail: dori.hines@finnegan.com
`
` jonathan.stroud@finnegan.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________________
`
`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC., and LG
`ELECTRONICS MOBILECOMM U.S.A., INC.
`
`Petitioner
`
`v.
`
`BLACK HILLS MEDIA, LLC
`Patent Owner
`____________________________________________
`
`IPR2015-00334
`Patent 8,050,652
`____________________________________________
`
`MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
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`
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`IPR2015-00334
`Motion for Joinder
`Patent 8,050,652
`
`STATEMENT OF PRECISE RELIEF REQUESTED
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`LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics
`
`
`I.
`
`MobileComm U.S.A., Inc. (collectively “LG” or “petitioner”) respectfully submit this
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`Motion for Joinder concurrently with a petition for inter partes review (IPR) of U.S.
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`Patent No. 8,050,652 (“the ’652 Petition”) under 35 U.S.C. § 315(c) and 37 C.F.R. §§
`
`42.22 and 42.122(b).
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`Petitioner requests institution of IPR and party joinder with the pending
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`instituted IPR titled, Samsung Electronics Co., Ltd. v. Black Hills Media, LLC,
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`IPR2014-00737 (“the Samsung IPR”). The Samsung IPR and the ’652 Petition
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`address the same patent, U.S. Patent No. 8,050,652 (“the ’652 Patent”) on the same
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`grounds, with the same expert. Samsung initiated that proceeding by petitioning the
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`Board on May 8, 2014; the Board instituted the Samsung IPR on November 4, 2014.
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`LG filed this motion within one month of institution. 37 C.F.R. § 42.122(b).
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`Joinder will efficiently resolve patent validity and will not prejudice the patent
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`owner or Samsung. The ’652 Petition raises the same grounds of unpatentability as
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`the Samsung IPR. Further, the expert declaration submitted with the ’652 Petition is
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`from the same declarant and is identical to the declaration submitted in the Samsung
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`IPR. This ’652 Petition does not present new substantive issues relative to the
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`Samsung IPR and does not seek to broaden its scope. Joinder would not complicate or
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`delay the Samsung IPR and would not adversely affect the schedule. Joinder would
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`1
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`result in efficient and timely resolution of validity. In contrast, absent joinder LG may
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`IPR2015-00334
`Motion for Joinder
`Patent 8,050,652
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`be prejudiced because its interests may not be adequately represented in the Samsung
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`IPR.
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`Should the panel join the parties, petitioner agrees to subordinate itself, allowing
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`Samsung to lead the joined proceedings absent settlement by Samsung, in line with
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`common Board practice. Joinder with the Samsung IPR would minimally affect both
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`its procedure and substance.
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`Petitioner timely filed this motion under 37 C.F.R. § 42.122(b)—submitting it
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`within a month of institution of the Samsung IPR.1
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`II. BACKGROUND AND RELATED PROCEEDINGS
`Black Hills Media, LLC (“Black Hills” or “Patent Owner”) is the owner of the
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`’652 Patent. Black Hills Media, LLC (“Black Hills”) asserted the ’652 Patent against
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`LG and others in Certain Media Devices, including Televisions, Blu-Ray Disc Players, Home
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`1 As stated in the Frequently Asked Questions section of the Patent Trial and Appeal
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`Board’s website (available at http://www.uspto.gov/ip/boards/bpai/prps.jsp),
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`petitioner understands that prior authorization for filing a motion for joinder with a
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`petition is not required. As suggested, the petitioner contacted the Board by email,
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`indicating that petitioner is willing to participate in a teleconference if the Board so
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`desires.
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`2
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`
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`Theater Systems, Tablets and Mobile Phones, Components Thereof and Associated Software, Inv. No.
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`IPR2015-00334
`Motion for Joinder
`Patent 8,050,652
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`337-TA-882 (U.S.I.T.C., filed May 13, 2013) (“the ITC Investigation”) and Black Hills
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`Media, LLC v. LG Electronics, Inc., 1:13-cv-00803 (filed May 6, 2013) (“the district
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`court litigation”). The ’652 patent was challenged by Samsung in IPR2014-00737, as
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`noted above. It was also challenged in Yamaha Corp. of Am. V. Black Hills Media LLC,
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`IPR2013-00594 (filed Sept. 18, 2013).
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`The ’652 Patent has been asserted in the following litigations:
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`Name
`Black Hills Media LLC v. Logitech Inc., et
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`al.
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`Number
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`District Filed
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`2-13-cv-06055 CACD August 19, 2013
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`Black Hills Media LLC v. Sonos Inc.
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`2-13-cv-06062 CACD August 19, 2013
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`Black Hills Media LLC v. Pioneer Corp., et
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`al.
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`Black Hills Media, LLC v. LG Electronics,
`
`Inc. et al
`
`Black Hills Media, LLC v. Toshiba Corp. et
`
`al
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`Black Hills Media, LLC v. Samsung
`
`Electronics Co. Ltd. et al
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`2-13-cv-05980 CACD August 15, 2013
`
`1-13-cv-00803 DED
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`May 6, 2013
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`1-13-cv-00805 DED
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`May 6, 2013
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`2-13-cv-00379
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`TXED May 6, 2013
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`3
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`
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`Black Hills Media, LLC v. Sharp Corp. et al 1-13-cv-00804 DED
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`IPR2015-00334
`Motion for Joinder
`Patent 8,050,652
`
`May 6, 2013
`
`Black Hills Media, LLC v. Panasonic Corp.
`
`et al
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`Black Hills Media LLC v. Yamaha Corp. of
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`America
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`Black Hills Media LLC v. Pioneer
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`Corporation, et al.
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`1-13-cv-00806 DED
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`May 6, 2013
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`1-12-cv-00635 DED
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`May 22, 2012
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`1-12-cv-00634 DED
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`May 22, 2012
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`Black Hills Media LLC v. Sonos Inc.
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`1-12-cv-00637 DED
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`May 22, 2012
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`Black Hills Media LLC v. Logitech Inc., et
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`al.
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`Black Hills Media LLC v. Logitech Inc., et
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`al.
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`1-12-cv-00636 DED
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`May 22, 2012
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`2-13-cv-06055 CACD August 19, 2013
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`Black Hills Media LLC v. Sonos Inc.
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`2-13-cv-06062 CACD August 19, 2013
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`Black Hills Media LLC v. Logitech Inc., et
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`al.
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`Black Hills Media, LLC v. Yamaha Corp.
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`of America
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`Black Hills Media, LLC v. Yamaha Corp.
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`of America
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`
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`1-12-cv-00636 DED
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`May 22, 2012
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`2:13-cv-06054
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`CACD May 22, 2012
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`8:14-cv-00101
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`CACD
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`Jan. 21, 2014
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`4
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`IPR2015-00334
`Motion for Joinder
`Patent 8,050,652
`
`2:14-cv-00471
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`CACD
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`Jan. 21, 2014
`
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`Black Hills Media, LLC v. Pioneer Corp., et
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`al.
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`
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`A.
`The Leahy–Smith America Invents Act (AIA) allows an IPR party to be joined
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`Legal Standard
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`with a preexisting IPR. See generally Pub. L. No. 112-29, 125 Stat. 284 (2011). The
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`statutory provision governing IPR joinder, 35 U.S.C. § 315(c), reads:
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`(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.
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`Under its discretion, the Board considers how joinder will affect the substance
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`and procedure of the preexisting proceeding. See Decision on Motion for Joinder,
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`Motorola Mobility LLC v. Softview LLC, IPR2013-00257, Paper 10 (P.T.A.B. June 20,
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`2013). In its response to comments on the Board’s proposed joinder rule, 37 C.F.R.
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`§ 4.122, the PTO indicated that “joinder would allow the Office to consolidate issues
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`and to account for timing issues that may arise” when instituting multiple proceedings
`5
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`involving the same patent. Changes to Implement Inter Partes Review Proceedings,
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`IPR2015-00334
`Motion for Joinder
`Patent 8,050,652
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`77 Fed. Reg. 48,680, 48,707 (Aug. 14, 2012). Here, joining LG to the Samsung IPR is
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`appropriate.
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`B.
`
`Joinder will not affect the Board’s ability to timely complete the
`review.
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`This petition is based on the same grounds and combinations of prior art the
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`Board considered in deciding to institute the Samsung IPR. For simplicity and
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`efficiency, LG has copied Samsung’s petition. LG does not seek to reintroduce
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`grounds or claims not instituted in the Samsung IPR and seeks only to join the
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`proceeding as instituted. Petitioner is retaining the same expert as Samsung, Dr. Kevin
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`Jeffay. The supporting declaration of Dr. Jeffay is identical to the declaration he
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`previously submitted in the Samsung IPR. Black Hills should not require any
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`discovery beyond that which it may need in the Samsung IPR—nor should the Board
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`permit any. The ’652 Petition presents no new substantive issues relative to the
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`Samsung IPR and does not seek to broaden the scope of the Samsung IPR.
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`For efficiency’s sake, LG will:
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`1) Refrain from filing its own substantive responses;
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`2) File “consolidated” responses with Samsung where appropriate;
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`3) Refrain from requesting or reserving additional deposition time;
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`4) Refrain from requesting or reserving any additional oral hearing time; and
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`6
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`IPR2015-00334
`Motion for Joinder
`Patent 8,050,652
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`5) Assume a second-chair role as long as Samsung remains in the proceeding.2
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`Because LG does not raise new issues of patent invalidity, is retaining the same
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`expert and submitting an identical declaration, and has agreed to consolidated
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`discovery, joinder should not affect the Board’s one-year statutory deadline.3
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`C.
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`Joinder will promote efficiency by consolidating issues, avoiding
`wasteful duplication, and preventing inconsistency.
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`LG presents substantively identical arguments for patent invalidity and identical
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`supporting evidence as the Samsung IPR. Joinder will simplify briefing and discovery.
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`Given that the Samsung IPR and the ’652 Petition address the same prior art and
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`grounds for rejection of the same claims, joining these proceedings allows for joint
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`submissions and discovery, further streamlining the proceedings. This should
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`promote efficiency and conserve the Board’s and the parties’ resources.
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`2 These limitations are consistent with previously granted joinder motions. See, e.g.,
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`Enzymotech Ltd. v. Neptune Techs., IPR2014-00556, Paper 19 (July 9, 2014) (agreeing to
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`procedural concessions, such as “consolidated” responses); Gillette Co. v. Zond,
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`IPR2014-01016, Paper 13 (Nov. 10, 2014) (same); SAP Am. Inc. v. Clouding IP, LLC,
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`IPR2014-00306, Paper 13 (May 19, 2014) (same).
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`3 LG notes that 35 U.S.C. § 316(a)(11) and associated rule 37 C.F.R. § 42.100(c) also
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`grant the Board flexibility to extend the one-year period by up to six months in the case
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`of joinder, if needed.
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`7
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`By contrast, determining the same patent validity questions for the ’652 Patent
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`IPR2015-00334
`Motion for Joinder
`Patent 8,050,652
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`
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`with fewer parties would result in multiple proceedings that would duplicate efforts,
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`create a risk of inconsistent results, and result in piecemeal review. Joinder avoids that.
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`D. Without joinder, LG may be prejudiced.
`LG may be prejudiced if it is not permitted to join in the Samsung IPR. Black
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`Hills has asserted the ’652 patent against LG in pending litigation. LG should be
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`permitted to join the pending IPR to participate in proceedings affecting a patent
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`asserted against it.
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`Joinder will not prejudice Black Hills or Samsung.
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`E.
`Permitting joinder will not prejudice Black Hills or Samsung. LG raises issues
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`already before the Board and long known to Black Hills. Joining is more convenient
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`and efficient for Black Hills and Samsung, providing a single review on the ’652 patent.
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`Addressing patent validity in a single proceeding with a statutory deadline serves the
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`parties’ and Board’s interests.
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`IV. CONCLUSION
`Joinder will not affect the substance, procedure, or scheduling of the Samsung
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`IPR. LG files under the statutory joinder provisions as contemplated by the AIA.
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`Joinder will simplify the issues and promote efficiency, justice, and speed.
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`8
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`LG respectfully requests IPR on U.S. Patent No. 8,050,652 and joinder with
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`IPR2015-00334
`Motion for Joinder
`Patent 8,050,652
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`
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`Samsung Electronics Co., Ltd. v. Black Hills Media, LLC, IPR2014-00737.4
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`
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`Dated: December 3, 2014 Respectfully,
`
` __/Doris Johnson Hines/__________
` Doris Johnson Hines
`Registration No. 34,629
`Jonathan R.K. Stroud
`Registration No. 72,518
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone:
`202-408-4000
`Facsimile:
`202-408-4400
`E-mail:
`dori.hines@finnegan.com
`
`
`jonathan.stroud@finnegan.com
`
`
`
` Patent Attorneys for Petitioner
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`
`
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`4 Although LG believes no fee is required for this Motion, LG authorizes the
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`Commissioner to charge any additional fees required for this Motion, to Deposit
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`Account No. 06-0916.
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`
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`9
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`IPR2015-00334
`Motion for Joinder
`Patent No. 8,050,652
`
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`CERTIFICATE OF SERVICE
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`Under 37 C.F.R. §§ 42.6(e) and 42.105(a), this certifies that I caused to be served
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`a true and correct copy of the foregoing MOTION FOR JOINDER UNDER 37
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`C.F.R. §§ 42.22 AND 42.122(b) by Federal Express delivery, on Wednesday,
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`December 03, 2014 on counsel for the Patent Owner at the correspondence address
`
`below:
`
`Thomas Engellenner
`Reza Mollaaghababa
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`engellennert@pepperlaw.com
` mollaaghababar@pepperlaw.com
`
`Concert Technology Corporation
`5400 Trinity Road, Suite 303
`Raleigh, NC, 27607
`
`Christopher Horgan
`Concert Technology Corporation
`1438 Dahlia Loop
`San Jose, CA 95126
`chris.horgan@concerttechonology.com
`
`Andrew Crain
`Thomas | Horstemeyer, LLP
`400 Interstate North Parkway, SE
`Suite 1500
`Atlanta, Georgia 30339
`Andrew.crain@thomashorstemeyer.com
`
`10
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`Dated: December 3, 2014
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`IPR2015-00334
`Motion for Joinder
`Patent No. 8,050,652
`
`
`Respectfully submitted,
`
`/Ashley F. Cheung/
`
`Ashley F. Cheung
` Case Manager
`
`
`
`
`
` Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`
`11
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