`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS, INC., TOSHIBA
`CORPORATION, AND VIZIO, INC.
`Petitioners
`
`
`
`v.
`
`
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 6,009,469
`Case IPR No.: To Be Assigned
`
`MOTION FOR JOINDER TO INSTITUTED INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b))
`
`Mail Stop: Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), LG Electronics, Inc.
`
`(“LGE”), Toshiba Corporation (“Toshiba”), and VIZIO, Inc. (“VIZIO”) move for
`
`joinder with the Inter Partes Review of U.S. Patent No. 6,009,469, Samsung Elecs. Co. v.
`
`Straight Path IP Grp., Inc., IPR2014-01367 (“the Samsung IPR”), which was instituted
`
`on March 6, 2015. This motion is timely because it is filed within one month of
`
`institution of the Samsung IPR. 37 C.F.R. § 42.122(b).
`
`Petitioners request institution of their concurrently filed Petition for Inter Partes
`
`Review. The Petition is a carbon copy of the original Samsung IPR petition in all
`
`material respects. The only changes are in the mandatory notices under 37 C.F.R.
`
`§ 42.8(b) (Section II.A.), and in matters of form. The concurrently filed Petition and
`
`the Samsung IPR petition challenge the same claims of the ’469 patent on the same
`
`grounds relying on the same prior art and evidence, including declarations identical in
`
`substance from the same declarants and expert.1
`
`Petitioners request that the institution of their Petition be limited solely to the
`
`grounds instituted in the Samsung IPR filed by the original petitioners in the Samsung
`
`IPR (“the Samsung Petitioners”). Petitioners agree to proceed solely on the grounds,
`
`evidence, and arguments advanced, or that will be advanced, in the instituted Samsung
`
`1 The declarations have been updated only to reflect retention by Petitioners and are
`
`otherwise identical to the declarations submitted in the Samsung IPR.
`
`-1-
`
`
`
`
`
`IPR. Thus, the Petition warrants institution under 35 U.S.C. § 314, and 35 U.S.C.
`
`§ 315(c) permits LGE’s, Toshiba’s, and VIZIO’s joinder to the Samsung IPR.
`
`Further, if joined, Petitioners agree to adhere to all applicable deadlines in the
`
`Samsung IPR and coordinate all filings with the Samsung Petitioners and each other.
`
`No Petitioner will submit a separate filing unless its position differs from the position
`
`of the Samsung Petitioners, in which case the Petitioner will limit any additional filing
`
`to seven (7) pages or less.2 Also, Petitioners will not seek additional depositions or
`
`deposition time, and will coordinate deposition questioning and hearing presentations
`
`with the Samsung Petitioners and each other.
`
`Joinder will help efficiently resolve the disputes among the parties. By joinder,
`
`a single Board decision may dispose of the issues raised in the Samsung IPR for all
`
`parties. Further, the Patent Owner has asserted the ’469 patent in district court
`
`actions against LGE, Toshiba, and VIZIO. Joinder will estop LGE, Toshiba, and
`
`VIZIO from asserting in district court those issues resolved in a final written decision
`
`in the Samsung IPR, thus narrowing the issues in the district court actions. See
`
`35 U.S.C. § 315(e)(2). Finally, joinder would not complicate or delay the Samsung
`
`IPR, and would not adversely affect any schedule set in that proceeding. In sum,
`
`joinder would promote efficient adjudication in multiple forums.
`
`
`2 Each Petitioner will continue on this basis unless and until the Samsung IPR is
`
`terminated as to the Samsung Petitioners and the other Petitioners.
`
`-2-
`
`
`
`
`
`Joinder will not unduly prejudice any party. The Samsung Petitioners consent
`
`to LGE’s, Toshiba’s, and VIZIO’s joinder.3 Because joinder will not add any new
`
`substantive issues, delay the schedule, burden deponents, or increase needless filings,
`
`any additional costs on the Patent Owner would be minimal. On the other hand,
`
`denial of joinder would prejudice LGE, Toshiba, and VIZIO. Their interests may not
`
`be adequately protected in the Samsung IPRs, particularly if the Samsung Petitioners
`
`settle with the Patent Owner. LGE, Toshiba, and VIZIO should be allowed to join in
`
`a proceeding affecting a patent asserted against them.
`
`II. BACKGROUND AND RELATED PROCEEDINGS
`Straight Path IP Group, Inc. (the “Patent Owner”) is the owner of the ’469
`
`Patent. The Patent Owner asserted the ’469 Patent against LGE, Toshiba, and
`
`VIZIO, among others, in an ITC investigation captioned Certain Point-to-Point Network
`
`Communication Devices and Products Containing Same, Inv. No. 337-TA-892 (U.S.I.T.C.,
`
`filed Aug. 1, 2013), which was terminated by the ITC in response to Patent Owner’s
`
`motion to withdraw the complaint and terminate the investigation shortly before the
`
`scheduled trial, and in pending district court actions—Straight Path IP Grp., Inc. v.
`
`VIZIO, Inc., 1:13-cv-00934-AJT-IDD (E.D. Va.), which consolidated Straight Path IP
`
`3 The Patent Owner opposes “on at least the grounds that the real party in interest is
`
`not named and is statutorily barred.” As explained in Section III. E. below, this
`
`argument is without merit.
`
`-3-
`
`
`
`
`
`Grp., Inc. v. LG Elecs. Inc., 1:13-cv-00933-CMH-TRJ (E.D. Va.) and Straight Path IP
`
`Grp., Inc. v. Toshiba Corp., 1:13-cv-01070-AJT-IDD (E.D. Va.). The Patent Owner has
`
`asserted the ’469 patent, and/or related U.S. Patent Nos. 6.108,704 (“the ’704 patent”)
`
`and 6,131,121 (“the ’121 patent”) in numerous district court actions against other
`
`parties in the Eastern District of Virginia (1:13-cv-00935, 1:13-cv-00936, 1:13-cv-
`
`01071, 2:12-cv-00007; 2:12-cv-00009; 2:14-cv-00233; 2:13-cv-00427; 3:13-cv-00503),
`
`Eastern District of Texas (6:13-cv-00604; 6:13-cv-00605; 6:13-cv-00606; 6:13-cv-
`
`00607, 6:14-cv-00405; 6:14-cv-00534), Northern District of California (3:14-cv-04302;
`
`3:14-cv-04309; 3:14-cv-04312; 5:14-cv-04561), Southern District of New York (1:14-
`
`cv-07798); District of New Jersey (2:06-cv-02469); and Western District of Arkansas
`
`(4:10-cv-04090).
`
`A number of IPR petitions have been filed against the ’469 patent. Setting
`
`aside Samsung’s IPR2014-01367 challenging claims 1-3, 5-6, 9-10, 14, and 17-18,
`
`LGE, Toshiba, VIZIO, and Hulu, LLC (“Hulu”) filed a joint IPR petition challenging
`
`the same claims (Case No. IPR2015-00198). The Board had not yet decided whether
`
`to institute IPR2015-00198 (accorded a filing date of October 31, 2014) at the time
`
`the Petitioners filed the present motion. Other IPR challenges to the ’469 patent
`
`include IPR2014-00231 (settled before institution) and IPR2014-01225 (settled).
`
`Additionally, there have been a number of IPR challenges against the ’704 and
`
`the ’121 patents, which are related to the ’469 patent. The Board held that claims 1-7
`
`and 32-42 of the ’704 patent were unpatentable in IPR2013-00246. The Patent
`
`-4-
`
`
`
`
`
`Owner appealed the Board’s final written decision to the Federal Circuit and the
`
`appeal remains pending (Court of Appeals Docket No. 15-1212 (Fed. Cir.)). Other
`
`IPR challenges to the ’704 patent include IPR2014-01366 (instituted), IPR2015-00209
`
`(awaiting
`
`institution decision), IPR2014-00230 (settled before
`
`institution) and
`
`IPR2014-01241 (settled). IPR challenges to the ’121 patent include IPR2014-01368
`
`(instituted), IPR2015-00196 (awaiting institution decision), IPR2014-00229 (not
`
`instituted) and IPR2014-01234 (settled).
`
`III. STATEMENT OF REASONS FOR THE REQUESTED RELIEF
`A.
`The time limitation set forth in 35 U.S.C. § 315(b) does not apply to a request
`
`Legal Standards and Applicable Rules
`
`for joinder. 35 U.S.C. § 315(b). The Board has discretion to join a properly filed IPR
`
`petition to a previously instituted IPR proceeding. 35 U.S.C. § 315(c); 37 C.F.R.
`
`§ 42.122(b); see also Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 19, at
`
`4-6; Sony Corp. v. Yissum Res. & Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013-
`
`00326, Paper 15, at 3-4; Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 15, at
`
`3-4. “The Board will determine whether to grant joinder on a case-by-case basis,
`
`taking into account the particular facts of each case, substantive and procedural issues,
`
`and other considerations.” Dell, IPR2013-00385, Paper 19, at 3. The movants bear
`
`the burden of proof in establishing entitlement to the requested relief. 37 C.F.R.
`
`§§ 42.20(c), 42.122(b). A motion for joinder should:
`
`-5-
`
`
`
`
`
`(1) set forth the reasons why joinder is appropriate; (2) identify any new
`grounds of unpatentability asserted in the petition; (3) explain what
`impact (if any) joinder would have on the trial schedule for the existing
`review; and (4) address specifically how briefing and discovery may be
`simplified.
`
`Dell, IPR2013-00385, Paper 19, at 4.
`
`B.
`
`Joinder will not add any new grounds of unpatentability or have an
`impact on the trial schedule.
`
`The Petition is based on the same grounds and combinations of prior art that
`
`the Board considered in deciding to institute the Samsung IPR. For simplicity and
`
`efficiency, Petitioners have copied the substance of Samsung’s petition and
`
`accompanying declarations. Petitioners do not seek to reintroduce grounds or claims
`
`not instituted in the Samsung IPR and seek only to join the proceeding as instituted.
`
`Petitioners have retained the same expert, who has submitted an identical declaration
`
`as in the Samsung IPR. The Patent Owner should not require any discovery beyond
`
`that which it may need in the Samsung IPR—nor should the Board permit any. The
`
`Petition presents no new substantive issues relative to the Samsung IPR and does not
`
`seek to broaden the scope of the Samsung IPR.
`
`For efficiency’s sake, LGE, Toshiba, and VIZIO will:
`
`1. Adhere to all applicable deadlines in the Samsung IPR;
`
`2. Submit “consolidated” filings with the Samsung Petitioners, as set forth
`
`above in the statement of precise relief requested;
`
`-6-
`
`
`
`
`
`3. Refrain from requesting or reserving any additional depositions or
`
`deposition time;
`
`4. Refrain from requesting or reserving additional oral hearing time; and
`
`5. Assume a second-chair role as long as the Samsung Petitioners remain in
`
`the proceeding.4
`
`In view of these provisions, joinder should not affect the trial schedule.
`
`C.
`
`Joinder will promote efficiency by consolidating issues, avoiding
`wasteful duplication, and preventing inconsistency.
`
`Petitioners present identical arguments and supporting evidence as the
`
`Samsung IPR. Joinder will simplify briefing and discovery. Given that the Samsung
`
`IPR and the Petition address the same prior art and grounds for rejection of the same
`
`claims, joining these proceedings allows for joint submissions and discovery, further
`
`streamlining the proceedings. This should promote efficiency and conserve the
`
`Board’s and the parties’ resources. Further, joinder will estop Petitioners from
`
`asserting in district court those issues resolved in a final written decision in the
`
`
`4 These limitations are consistent with previously granted joinder motions. See, e.g.,
`
`Enzymotech Ltd. v. Neptune Techs., IPR2014-00556, Paper 19 (July 9, 2014) (agreeing to
`
`procedural concessions, such as “consolidated” responses); Gillette Co. v. Zond,
`
`IPR2014-01016, Paper 13 (Nov. 10, 2014) (same); SAP Am. Inc. v. Clouding IP, LLC,
`
`IPR2014-00306, Paper 13 (May 19, 2014) (same).
`
`-7-
`
`
`
`
`
`Samsung IPR, thus narrowing the issues in the district court actions. See 35 U.S.C.
`
`§ 315(e)(2).
`
`Joinder is Appropriate
`
`D.
`The Board has previously stated that it is “mindful of a policy preference for
`
`joining a party that does not present new issues.” Enzymotec Ltd. v. Neptune Techs &
`
`Bioresources, Inc. IPR2014-00556, Paper No. 19 at 6 (July 9, 2014) (citing 157 CONG.
`
`REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office anticipates
`
`that joinder will be allowed as of right – if an inter partes review is instituted on the
`
`basis of a petition, for example, a party that files an identical petition will be joined to
`
`that proceeding, and thus allowed to file its own briefs and make its own
`
`arguments.”))
`
`Here, because Petitioners seek institution solely on the grounds, evidence, and
`
`arguments advanced, or that will be advanced, in the already-instituted Samsung IPR,
`
`institution is warranted under 35 U.S.C. § 314 and LGE’s, Toshiba’s, and VIZIO’s
`
`joinder to the Samsung IPR is appropriate under 35 U.S.C. § 315(c). No new grounds
`
`of unpatentability are asserted. As explained above, joinder would not adversely
`
`impact the trial schedule, briefing, or discovery in the Samsung IPR, and the
`
`remaining equities compel joinder.
`
`-8-
`
`
`
`
`
`LGE, Toshiba, and VIZIO are filing this Petition and joinder motion to ensure
`
`that the trial is completed in the event that the Samsung Petitioners reach settlement
`
`with Patent Owner.
`
`1. Without joinder, LGE, Toshiba, and VIZIO will be
`prejudiced
`
`A denial of joinder would prejudice LGE, Toshiba, and VIZIO. Their
`
`substantial interests, as parties against whom the ’469 patent has been asserted in
`
`multiple infringement actions, may not be adequately protected by the Samsung
`
`Petitioners in the Samsung IPRs. For example, Petitioners have an interest that the
`
`Samsung IPR reach a final determination to facilitate a timely and cost-effective end
`
`to the controversy between Petitioners and Patent Owner.
`
`LGE, Toshiba, and VIZIO should be allowed to join in a proceeding affecting
`
`a patent asserted against them.
`
`2.
`The Samsung Petitioners have already consented to LGE’s, Toshiba’s, and
`
`Joinder will not unduly prejudice any party
`
`VIZIO’s joinder. The Petition raises issues already before the Board and long known
`
`to the Patent Owner. Addressing patent validity in this proceeding, well on its way
`
`towards a final determination, serves the parties’ and Board’s interests.
`
`E. The Patent Owner’s Grounds for Opposition Lack Merit
`The Patent Owner opposes this motion, asserting incorrectly that a “real party
`
`in interest is not named and is statutorily barred.”
`
`-9-
`
`
`
`
`
`At the outset, this is not a ground for opposing joinder. Additionally, at the
`
`time of stating its opposition, Patent Owner had not seen the Petition. Thus, the
`
`extent of Patent Owner’s objection is speculative and Petitioners reserve the right to
`
`seek a reply to address whatever real party-in-interest argument, if any, Patent Owner
`
`raises after being served the Petition.
`
`In any case, Patent Owner’s position is wrong. Petitioners understand that
`
`Patent Owner intends to argue that Hulu, LLC (“Hulu”) is the unnamed real party-in-
`
`interest. However, Hulu was not involved in the preparation of this Petition in any
`
`way. See Exhibits 1034-1036. Only LGE, Toshiba, and VIZIO: (1) were involved in
`
`the decision to submit this Petition and joinder motion; (2) bear the costs incurred by
`
`this Petition and joinder motion; and (3) will control the Petitioners’ actions if the IPR
`
`is instituted.
`
`IV. CONCLUSION
`Joinder will not affect the substance, procedure, or scheduling of the Samsung
`
`IPR. LGE, Toshiba, and VIZIO file this motion under the statutory joinder
`
`provisions as contemplated by the AIA. Joinder will simplify the issues and promote
`
`efficiency, justice, and speed.
`
`-10-
`
`
`
`For the foregoing reasons, LGE, Toshiba, and VIZIO respectfully request inter
`
`partes review of U.S. Patent No. 6,009,469 and joinder with Samsung Elecs. Co. v. Straight
`
`Path IP Grp., Inc., IPR2014-01367.5
`
`
`
`
`
`Respectfully submitted,
`
`/Rajeev Gupta/
`Rajeev Gupta, Reg. No. 55,873
`Darren M. Jiron, Reg. No. 45,777
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`901 New York Avenue, N.W.
`Washington, D.C. 20001-4413
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`
`
`
`
`5 Although no fee is believed to be required, the Commissioner is authorized to
`
`charge any additional fees required for this Motion, to Deposit Account No. 06-0916.
`
`-11-
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a)
`
`by Express Mail of a true and correct copy of this MOTION FOR JOINDER TO
`
`INSTITUTED INTER PARTES REVIEW on April 6, 2015, on counsel for the
`
`Patent Owner at the correspondence address below:
`
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`4300 Wilson Blvd., 7th Floor
`Arlington, Virginia 22203
`
`William Meunier
`Matthew Durell
`MINTZ, LEVIN, COHEN, FERRIS, GLOVSKY AND POPEO, P.C.
`One Financial Center
`Boston, Massachusetts 02111
`wameunier@mintz.com
`mdurell@mintz.com
`
`
`
`Respectfully submitted,
`
`Dated: April 6, 2015
`
`
`
`/Rajeev Gupta/
`Rajeev Gupta, Reg. No. 55,873
`Darren M. Jiron, Reg. No. 45,777
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`901 New York Avenue, N.W.
`Washington, D.C. 20001-4413
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
