`By:
`Justin B. Kimble (jkimble@bcpc-law.com)
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`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
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`Bragalone Conroy PC
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`2200 Ross Ave.
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`Suite 4500 – West
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`Dallas, TX 75201
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`Tel: 214.785.6670
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`Fax: 214.786.6680
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LG ELECTRONICS, INC.
`Petitioner,
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`v.
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`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner
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`Case IPR2015-00490
`U.S. Patent No. 7,300,194
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
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`Case IPR2015-00490
`Patent 7,300,194
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`Patent Owner Innovative Display Technologies (“IDT” or “Patent Owner”)
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`hereby files this opposition to the Motion for Joinder (“Motion,” Paper No. 3) filed
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`by LG Electronics, Inc. (“Petitioner”). Patent Owner hereby requests that the Board
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`deny Petitioner’s Motion.
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`I.
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`STATEMENT OF MATERIAL FACTS
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`1. IDT’s patent portfolio is currently subject to 20 IPRs:
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`a. IPR2014-01092 (U.S. Patent No. 7,434,974);
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`b. IPR2014-01094 (U.S. Patent No. 7,404,660);
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`c. IPR2014-01095 (U.S. Patent No. 8,215,816);
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`d. IPR2014-01096 (U.S. Patent No. 7,537,370);
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`e. IPR2014-01097 (U.S. Patent No. 7,300,194);
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`f. IPR2014-01357 (U.S. Patent No. 6,755,547);
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`g. IPR2014-01362 (U.S. Patent No. 7,384,177);
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`h. IPR2015-00359 (U.S. Patent No. 7,384,177);
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`i. IPR2015-00360 (U.S. Patent No. 7,300,194);
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`j. IPR2015-00361 (U.S. Patent No. 6,755,547);
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`k. IPR2015-00363 (U.S. Patent No. 7,404,660);
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`l. IPR2015-00366 (U.S. Patent No. 8,215,816);
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`m. IPR2015-00368 (U.S. Patent No. 7,434,974);
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`n. IPR2015-00487 (U.S. Patent No. 7,404,660);
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`2
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`Case IPR2015-00490
`Patent 7,300,194
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`o. IPR2015-00489 (U.S. Patent No. 7,384,177);
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`p. IPR2015-00490 (U.S. Patent No. 7,300,194);
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`q. IPR2015-00493 (U.S. Patent No. 7,537,370);
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`r. IPR2015-00495 (U.S. Patent No. 7,404,660);
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`s. IPR2015-00496 (U.S. Patent No. 8,215,816); and
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`t. IPR2015-00497 (U.S. Patent No. 7,434,974).
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`2.
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`As seen above, many of those IPRs cover overlapping patents. In fact,
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`the majority of those overlapping IPRs purport to advance identical grounds, the
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`only difference being that different entities filed them. That is the case for the three
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`IPRs concerning the patent-at-issue, U.S. Patent 7,300,194 (the “’194 patent”).
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`Those three IPRs are IPR2014-01097; IPR2015-00360; and IPR2015-00490 (the
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`instant IPR). Each of those three IPRs purports to advance nearly identical grounds
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`of invalidity. See Motion at 1 (“Indeed, the invalidity grounds raised in this IPR are
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`identical to the invalidity grounds raised in the LGD IPR.”); see also Mercedes-Benz
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`USA, LLC and Mercedes-Benz U.S. International, Inc., v. Innovative Display
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`Technologies LLC, IPR2015-00360, Paper 3 at 1 (stating the same using exactly the
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`same language) (“Indeed, the invalidity grounds raised in this IPR are identical to
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`the invalidity grounds raised in the LG IPR.”).
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`3.
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`LG Display Co., Ltd. filed IPR2014-01097 (the “first IPR”) against the
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`’194 patent on July 1, 2014.
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`4. Mercedes-Benz USA, LLC and Mercedes-Benz U.S. International, Inc.
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`filed IPR2015-00360 against the ’194 patent on December 4, 2014, seeking to join
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`the first IPR.
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`5.
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`Petitioner LG Electronics, Inc. filed IPR2015-00490 (the instant IPR)
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`against the ’194 patent on December 29, 2014, also seeking to join the first IPR.
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`6.
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`On January 13, 2015, the Board instituted the first IPR on the following
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`grounds:
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`a. Obviousness of claims 1, 4–6, and 28 over Pristash;
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`b. Anticipation of claims 1, 16, 22, 23, 27, and 31 by Funamoto;
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`c. Obviousness of claims 4, 5, and 6 over Funamoto;
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`d. Anticipation of claim 28 by Kobayashi; and
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`e. Anticipation of claims 1, 4–6, and 28 by Nishio.
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`No other proposed grounds of unpatentability were authorized. IPR2014-01097,
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`Paper 9 at 18
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`7.
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`On January 13, 2015, the Board also set a schedule for the first IPR,
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`wherein Patent Owner’s response is due on April 6, 2015 and oral argument is set
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`for September 21, 2015. IPR2014-01097, Paper 10 at 5.
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`8.
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` The schedule set for IPR2014-01097 was set concurrent and identical
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`to the schedule of IPR2014-01096, which involves related patent 7,537,370. Id..
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`II. AUTHORITY
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`To serve as a statutory basis for joinder, an IPR must first be instituted. See
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`35 U.S.C. § 315 (“If the Director institutes an inter partes review, the Director, in
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`his or her discretion, may join as a party to that inter partes review any person who
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`properly files a petition under section 311 …”) (emphasis added). Once instituted,
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`the Board has the discretion to join an inter partes review under 35 U.S.C. § 315. If
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`joinder is ordered, the Board has discretion to adjust the time period for issuing a
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`final determination in an inter partes review. 35 U.S.C. § 316(a)(11); 37 C.F.R. §
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`42.100(c). The Board determines whether to grant joinder on a case-by-case basis,
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`taking into account the particular facts of each case, substantive and procedural
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`issues, and other considerations. IPR2014-00702, Decision, July 24, 2014, Paper 12
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`at 3 (citing 157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl)).
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`When exercising its discretion to join IPR proceedings, the Board is mindful that
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`patent trial regulations, including the rules for joinder, must be construed to secure
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`the just, speedy, and inexpensive resolution of every proceeding. Id. (citing 35
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`U.S.C. § 316(b); 37 C.F.R. § 42.1(b)).
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`The moving party has the burden of proof to establish that it is entitled to the
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`requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). To determine whether to grant a
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`motion for joinder, the Board considers many factors, including, (1) time and cost
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`considerations, including the impact joinder would have on the trial schedule; and
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`(2) how briefing and discovery may be simplified. IPR2014-00702, Paper 12 at 3.
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`III. ARGUMENT
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`Petitioner’s Motion states that, “[a] motion for joinder should: (1) set forth the
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`reasons why joinder is appropriate; (2) identify any new grounds of unpatentability
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`asserted in the petition; (3) explain what impact (if any) joinder would have on the
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`trial schedule for the existing review; and (4) address specifically how briefing and
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`discovery may be simplified.” Motion at 5. The Motion does not adequately show
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`that requirements (1), (3), and (4) support joinder, and thus the Motion should be
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`denied.
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`A. Petitioners’ Motion Does not Set Forth Any Independent Reasons Why
`Joinder is Appropriate.
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`To meet the first requirement of a motion for joinder, Petitioners simply argue
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`the second and third requirements. First, Petitioners argue that this IPR “does not
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`raise any new grounds of unpatentability over what has been asserted in the LG IPR”
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`and that “Petitioners’ arguments regarding the asserted references are identical to
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`the arguments LG raised in the LG IPR.” Motion at 6. But those reasons alone are
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`not enough for joinder. See IPR2014-00702, Paper 12 at 4 (“As an initial matter, we
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`are not persuaded by Unified’s argument that, if there are two proceedings with
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`nearly identical petitions, the legislative history provides that joinder should be
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`granted ‘as a matter of right.’ Mot. 6; Reply 1. As we explained above, Section
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`315(c) clearly states that we have discretion to join a party. Unified fails to recognize
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`that joinder is not automatic, particularly given the need to complete proceedings in
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`a just, speedy, and inexpensive manner.”).
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`Second, Petitioners argue that joinder is appropriate because the “LG IPR has
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`not yet been instituted, and therefore, no scheduling order has been entered, yet.”
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`Motion at 6. After filing its own IPR so late after the first IPR, Petitioners should
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`have known that a decision on institution on the first IPR was imminent and that its
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`argument on this point would be moot by the time joinder briefing was completed.
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`Nevertheless, as discussed in the next section, joinder here would necessarily affect
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`the scheduling of at least the first IPR and likely another IPR.
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`B. Joinder Would Improperly Delay the Trial Schedule in the First IPR
`and Likely Another IPR.
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`In the first IPR, a trial schedule has already been set with Patent Owner’s
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`response due on April 6, 2015 and oral argument set for September 21, 2015.
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`IPR2014-01097, Paper 10 at 5. Patent Owner assumes that Petitioners would not
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`agree to proceed on the schedule that is set in the first IPR as Petitioners do not
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`mention that option in their Motion. Delaying the schedule of the first IPR would
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`inhibit the Board’s mandate “to complete proceedings in a just, speedy, and
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`inexpensive manner.” 37 C.F.R. § 42.1(b). As cited above, the Board’s interest in
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`completing proceedings in a just, speedy, and inexpensive manner supersedes its
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`interest in joining identical IPRs. See IPR2014-00702, Paper 12 at 4 (“we are not
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`persuaded by Unified’s argument that, if there are two proceedings with nearly
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`identical petitions, the legislative history provides that joinder should be granted ‘as
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`a matter of right.’… Unified fails to recognize that joinder is not automatic,
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`particularly given the need to complete proceedings in a just, speedy, and
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`inexpensive manner.”).
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`Furthermore, the first IPR has a concurrent and identical schedule set with
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`IPR2014-01096 which involves a related patent to the patent-at issue. Joinder here
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`would necessarily affect the schedule of IPR2014-01096, delaying that IPR too.
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`Thus, joining this proceeding with the first IPR would also affect the Board’s ability
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`to complete IPR2014-01096 in a timely manner. The potential impact of joinder on
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`the schedule of IPR2014-01096 weighs against joinder. See IPR2014-00702, Paper
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`12 at 7 (“IPR2014-00057 is not just a single case with no other pending related inter
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`partes reviews. Instead, IPR2014-00057 is one of five related inter partes reviews
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`between Rackspace and Personal Web in which a trial has been instituted. The
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`discovery process and trial schedule for IPR2014-00057 has been coordinated and
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`synchronized with each of the related inter partes reviews … Unified, however, does
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`not address adequately the impact of joinder on the other four related inter partes
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`reviews, much less present a good cause showing why the pendency for those
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`proceedings should be extended. As such, joining this proceeding with IPR2014-
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`00057 most likely would affect our ability to complete all five proceedings in a
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`timely manner and, as a result, weighs in favor of denying Unified’s Motion for
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`Joinder.”).
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`C. Petitioner does Not Sufficiently Explain how Briefing and Discovery
`may be Simplified.
`Perfunctory statements about how the parties will coordinate their filings are
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`not enough to show how briefing and discovery may be simplified. See IPR2014-
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`01143 Paper 11 at 6. Petitioner suggests that it might make consolidated filings and
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`be afforded additional pages of briefing to address points of disagreement. Motion
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`at 7-8. Petitioner also states simply that “LG and Petitioners can also coordinate their
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`questioning at depositions to avoid redundancy.” Id. at 8. But, like the petitioner in
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`IPR2014-01143, the Petitioner here “is silent as to whether the petitioner in” the First
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`IPR “has agreed to work together or supports Petitioner’s proposed additional pages
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`for briefing.” IPR2014-01143 Paper 11 at 6.
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`D. Patent Owner Will Likely Seek Additional Discovery in this IPR,
`which Weighs Further against Joinder.
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`Patent Owner will need to seek additional discovery to determine if LG
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`Display Co. Ltd. (“LG Display”) was controlling or funding the filing of this IPR,
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`and thus whether this IPR fails to name real parties-in-interest pursuant to 35 U.S.C.
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`§ 315(a)(2) or should be terminated under 35 U.S.C. § 315(d). Patent Owner is aware
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`that LG Display supplies Petitioners with the very LCDs that are the subject of Patent
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`Owner’s lawsuit asserting the ’194 patent against Petitioner: Delaware Display
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`Group LLC et al. v. LG Electronics Inc. et al., No. 1:13-cv-02109 (D. Del., filed
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`Dec. 31, 2013). Furthermore, LG Display is the petitioner in the first IPR that has
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`identical counsel and which Petitioners allege is identical to the present IPR. Under
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`these facts, it is likely that LG Display is an unnamed real party-in-interest to this
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`IPR. The potential for the additional discovery sought to prove LG Display’s
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`involvement in this IPR is beyond that already before the PTAB in IPR2014-01097,
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`and thus weighs against joinder. See IPR2014-00702, Paper 12 at 5-6 (“Based on
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`those statements, it is not unreasonable for PersonalWeb to seek authorization for
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`additional discovery in order to determine what companies, if any, fund and control
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`Unified. This potential for additional discovery presents a new substantive issue
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`beyond what is already before us in IPR2014-00057 and, as a result, weighs in favor
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`of denying Unified’s Motion for Joinder.”).
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`IV. CONCLUSION
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`Petitioners have not met their burden for joinder. To support their Motion for
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`joinder, Petitioners simply argue that the IPRs are identical and that the schedule in
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`the first IPR was not entered yet. Those are not sufficient reasons for joinder, given
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`that a schedule has now been entered, that joinder would certainly delay the schedule
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`of the first IPR and likely the schedule of another IPR and that additional discovery
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`would likely be sought in this IPR that is not sought in the first IPR.
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`Respectfully submitted,
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`Dated: February 17, 2015
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`________________________
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`Justin B. Kimble
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`Attorney for Patent Owner
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`Registration No. 58,591
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`Bragalone Conroy PC
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`2200 Ross Ave.
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`Suite 4500 – West
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`Dallas, TX 75201
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that document has been served via electronic
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`mail on February 17, 2015, to Petitioners at following email addresses pursuant to
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`their consent
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`in
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`its Petition at p. 3-4:
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`rpluta@mayerbrown.com,
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`bpaul@mayerbrown.com, astreff@mayerbrown.com, alam@mayerbrown.com,
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`with a courtesy copy to LGEDDGIPR@mayerbrown.com.
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` ________________________
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`Justin B. Kimble
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`Attorney for Patent Owner
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`Registration No. 58,591
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`Bragalone Conroy PC
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`2200 Ross Ave.
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`Suite 4500 – West
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`Dallas, TX 75201
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`12
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