Patent No. 7,296,121
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`LG ELECTRONICS, INC., LG ELECTRONICS USA, INC., LG
`ELECTRONICS MOBILECOMM USA, INC., SONY CORPORATION, SONY
`ELECTRONICS INC., SONY MOBILE COMMUNICATIONS AB, AND SONY
`MOBILE COMMUNICATIONS (USA) INC.,
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`Petitioners
`
`v.
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`MEMORY INTEGRITY, LLC,
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`Patent Owner
`
`_____________________
`
`Inter Partes Review
`
`Patent 7,296,121 B2
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`_____________________
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`MOTION FOR JOINDER UNDER
`35 U.S.C. 315(c) AND 37 C.F.R. § 42.22 AND 42.122(b)
`TO RELATED INTER PARTES REVIEW IPR2015-00163
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`LG ELECTRONICS, INC., LG ELECTRONICS USA, INC., LG
`ELECTRONICS MOBILECOMM USA, INC., SONY CORPORATION, SONY
`ELECTRONICS INC., SONY MOBILE COMMUNICATIONS AB, AND SONY
`MOBILE COMMUNICATIONS (USA) INC.,
`
`Petitioners
`
`v.
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`MEMORY INTEGRITY, LLC,
`
`Patent Owner
`
`_____________________
`
`Inter Partes Review
`
`Patent 7,296,121 B2
`
`_____________________
`
`MOTION FOR JOINDER UNDER
`35 U.S.C. 315(c) AND 37 C.F.R. § 42.22 AND 42.122(b)
`TO RELATED INTER PARTES REVIEW IPR2015-00163
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`Patent No. 7,296,121
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`I. STATEMENT OF THE PRECISE RELIEF REQUESTED
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`LG Electronics, Inc., LG Electronics, USA, Inc., LG Electronics
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`Mobilecomm USA, Inc., Sony Corporation, Sony Electronics Inc., Sony Mobile
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`Communications AB, and Sony Mobile Communications (USA) Inc. (“Petitioners”)
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`respectfully submit this Motion for Joinder, together with a Petition for Inter
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`Partes Review of U.S. Patent No. 7,296,121 (“the LG-Sony Petition”) filed
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`contemporaneously herewith. Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R
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`§ 42.122(b), Petitioners request institution of an inter partes review and joinder
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`with the inter partes review in Apple et al. v. Memory Integrity, LLC, IPR2015-
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`00163 (the “Apple IPR”), which was instituted on May 8, 2015 and concerns the
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`same patent, U.S. Patent No. 7,296,121 (“the ’121 patent”). Petitioners’ request for
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`joinder is timely. The LG-Sony Petition is also narrowly tailored to the same
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`claims, prior art, and grounds of unpatentability that are the subject of the Apple
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`IPR. In addition, Petitioners are willing to streamline discovery and briefing.
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`Petitioners submit that joinder is appropriate because it will not prejudice the
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`parties to the Apple IPR while efficiently resolving the question of the ’121
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`patent’s validity in a single proceeding.
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`II. STATEMENT OF MATERIAL FACTS
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`1.
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`On November 1, 2013, Memory Integrity filed civil actions against
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`Amazon.com, Inc., Apple Inc., ASUSTek Computer Inc. et al., Blackberry Limited
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`1
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`Patent No. 7,296,121
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`et al., Fuhu Inc., Fujitsu Limited et al., Google Inc. et al., HTC Corp. et al., Huawei
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`Device USA Inc. et al., Intel Corp., Lenovo Group Ltd. et al., LG Electronics, Inc.
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`et al., Motorola Solutions Inc., Samsung Electronics Company Ltd. et al., Sony
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`Corporation et al., Toshiba Corp. et al., ZTE Corp. et al., with Civil Action Nos.
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`1:13-cv-01795 through 1:13-cv-01811, respectively.
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`2.
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`On November 26, 2013, Memory Integrity filed civil actions against
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`Archos S.A. et al., Barnes & Noble Inc. et al., Hisense International Co. Ltd et al.,
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`and Microsoft Corp., with Civil Action Nos. 1:13-cv-01981 through 1:13-cv-01984.
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`3.
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`On October 28, 2014 Apple Inc.; HTC Corp. and HTC America, Inc.;
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`Samsung Electronics Co. Ltd, Samsung Electronics America, Inc., Samsung
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`Telecommunications America, LLC; and Amazon.com, Inc. filed a petition (the
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`“Apple Petition”) for inter partes review requesting cancellation of claims 1-6, 8-
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`12, and 15-25 of the ’121 patent.
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`4.
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`On May 8, 2015, the Board instituted Apple’s Petition, finding that a
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`reasonable likelihood existed that the Apple Petition would prevail in showing the
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`unpatentability of claims 4-6, 11, and 19-24 of the ’121 patent.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
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`A. Legal Standard
`The Board has the authority under 35 U.S.C. §315(c) to join a properly filed
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`inter partes review petition to an instituted inter partes review proceeding. See 35
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`Patent No. 7,296,121
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`U.S.C. §315(c). A motion for joinder must be filed within one month of the Board
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`instituting an original inter partes review. 37 C.F.R. §42.122(b). In deciding
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`whether to exercise its discretion, the Board considers factors including: (1) the
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`reasons why joinder is appropriate; (2) whether the new petition presents any new
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`grounds of unpatentability; (3) what impact, if any, joinder would have on the trial
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`schedule for the existing review; and (4) how briefing and discovery may be
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`simplified. See Macronix Int’l Co. v. Spansion, IPR2014-00898, Paper 14, at 4
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`(Aug. 13, 2014) (quoting Kyocera Corporation v. Softview LLC, IPR2013-00004,
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`Paper 15 at 4 (April 24, 2013)).
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`B. Petitioners’ Motion for Joinder is Timely
`This Motion for Joinder is timely because it is filed within one month of the
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`May 8, 2015 institution decision of the Apple IPR. See 37 C.F.R. §42.122(b). The
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`one-year bar set forth in 37 C.F.R. §42.101(b) does not apply to the LG-Sony
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`Petition because this Motion for Joinder is filed concurrently with the LG-Sony
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`Petition. 37 C.F.R. §42.122(b); Samsung Elecs. Co. v. Va. Innovation Scis., Inc.,
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`IPR2014-00557, Paper 10 at 15 (June 13, 2014).
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`C. Each Factor Weighs in Favor of Joinder
`Each of the four factors considered by the Board weighs in favor of joinder.
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`Specifically, the LG-Sony Petition does not present any new grounds of
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`unpatentability, rather it is substantively identical to the Apple Petition; joinder
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`Patent No. 7,296,121
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`will have minimal if any impact on the schedule, as all issues are substantively
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`identical and Petitioners will accept an “understudy” role; finally, the briefing and
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`discovery will be simplified by resolving all issues in a single proceeding.
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`Accordingly, joinder is appropriate.
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`1. Joinder Is Appropriate
`Joinder with the Apple IPR is appropriate because the LG-Sony Petition
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`involves the same patent, challenges the same claims, relies on the same expert
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`declaration, and is based on the same grounds and combinations of prior art
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`submitted in the Apple Petition. Further, the LG-Sony Petition relies solely on
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`grounds from the Apple Petition that the Board instituted on May 8, 2015. The LG-
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`Sony Petition is substantively identical to the Apple Petition, containing only
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`minor differences related to formalities of different parties filing the petition. There
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`are no changes to the facts, citations, evidence, or arguments presented in the
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`Apple Petition. Since these proceedings are substantively identical, good cause
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`exists for joining this proceeding with the Apple IPR so that the Board can resolve
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`all grounds in both the LG-Sony and Apple Petitions in a single proceeding.
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`2. Petitioners Propose No New Grounds of Unpatentability
`The LG-Sony Petition does not present any new grounds of unpatentability.
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`The LG-Sony Petition is substantively identical to the Apple Petition, except that it
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`only includes grounds the Board instituted. The LG-Sony Petition presents the
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`Patent No. 7,296,121
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`unpatentability of the same claims of the same patent in the same way as the Apple
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`Petition.
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`3. Joinder Will Not Negatively Impact the Apple IPR Trial Schedule
`Since the LG-Sony Petition is substantively identical to the Apple Petition,
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`with the same grounds rejecting the same claims, as instituted by the Board, there
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`are no new issues for the Patent Owner to address. Since the Patent Owner already
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`has to address all the issues in the LG-Sony Petition, due to the same issues being
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`present in the Apple Petition, Patent Owner will require no additional responses or
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`arguments. Without any new issues present, there is no reason to delay or alter the
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`schedule already present in the Apple IPR, and Petitioners explicitly consent to this
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`schedule. Further, the Patent Owner Preliminary Response already filed in the
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`Apple IPR addresses any and all issues in the LG-Sony Petition, since the issues
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`are substantively identical to the issues of the Apple Petition. See IPR2015-00163,
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`paper 13.
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`The Patent Owner Response will also not be impacted because the issues
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`presented in the Apple Petition are identical to the issues presented in the LG-Sony
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`Petition. Patent Owner will not require any additional analysis beyond what it will
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`already undertake to respond to the Apple Petition. Also, since the LG-Sony
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`Petition relies on the same expert and a substantively identical declaration, only a
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`single deposition is needed for the proposed joined proceeding.
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`Patent No. 7,296,121
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`Joinder of this proceeding with the Apple IPR does not impact the schedule
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`negatively, in any meaningful way. Further, if it is determined that a small
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`adjustment were necessary, this is already provided for in the rules and is a routine
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`undertaking by parties in IPR proceedings. 35 U.S.C. § 316(a)(1); 37 C.F.R. §
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`42.100(c). Therefore, a slight adjustment in a schedule, should one be needed, is
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`not a reason to deny joining the present LG-Sony Petition with the Apple IPR.
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`4. Procedures to Simplify Briefing and Discovery
`The Apple Petition and LG-Sony Petition present substantively identical
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`grounds of rejection, including the same art combinations against the same claims.
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`Petitioners explicitly agree to take an “understudy” role, described by the Board in
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`other proceedings:
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`(a) all filings by [Petitioners] in the joined proceeding be consolidated with
`[the filings of the petitioners in the Apple IPR], unless a filing solely
`concerns issues that do not involve [the petitioners in the Apple IPR]; (b)
`[Petitioners] shall not be permitted to raise any new grounds not already
`instituted by the Board in the [Apple IPR], or introduce any argument or
`discovery not already introduced by [the petitioners in the Apple IPR]; (c)
`[Petitioners] shall be bound by any agreement between [Patent Owner] and
`[the petitioners in the Apple IPR] concerning discovery and/or depositions;
`and (d) [Petitioners] at deposition shall not receive any direct, cross-
`examination or redirect time beyond that permitted for [the petitioners in the
`Apple IPR] alone under either 37 C.F.R. § 42.53 or any agreement between
`[Patent Owner] and [the petitioners in the Apple IPR].
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`Patent No. 7,296,121
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`See IPR2014-00550, No. 38 at 5 (P.T.A.B. Apr. 10, 2015). Petitioners will assume
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`the primary role only if Apple, and the other parties cease to participate in the
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`Apple IPR. Petitioners are essentially asking the Board to join them as a party to
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`the Apple IPR. Target Corp. v. Destination Maternity Corp., IPR2014-00508,
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`Paper 18, pp. 10-11. The petitioners in the Apple IPR have no objection to
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`Petitioners joining in an “understudy” role.
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`By accepting an “understudy” role, the Patent Owner and Petitioners can
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`comply with the current schedule and avoid any duplication of effort by the Board
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`or the Patent Owner. These steps will minimize any potential complications or
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`delay that potentially may have resulted by joinder.
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`IV. Conclusion
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`Based on the factors outlined above, Petitioners request the Board grant the
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`LG-Sony Petition for Inter Partes Review of U.S. Patent No. 7,296,121 and then
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`grant joinder with the Apple et al. v. Memory Integrity, LLC, IPR2015-00163
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`proceeding.
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`Patent No. 7,296,121
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`Respectfully submitted,
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`Dated:
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`June 8, 2015
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`/s/ Michael Sander
`
`
`Lewis V. Popovski (Reg. No. 38,139)
`Zaed M. Billah (Reg. No. 71,418)
`Michael E. Sander (Reg. No. 71,667)
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY
`Telephone: 212.425.7200
`Fax: 212.425.5288
`Email: lpopovski@kenyon.com
`Email: zbillah@kenyon.com
`Email: msander@kenyon.com
`
`Henry Petri (Reg. No. 33,063)
`Sunwoo Lee (Reg. No. 43,337)
`Ryan Murphy (Reg. No. 66,285)
`Jay Guiliano (Reg. No. 41,810)
`Novak Druce Connolly Bove + Quigg LLP
`1875 Eye Street, N.W.
`Eleventh Floor
`Washington, D.C. 20006
`Telephone: 202.331.7111
`Fax: 202.293.6229
`Email: henry.petri@novakdruce.com
`Email: sunwoo.lee@novakdruce.com
`Email: ryan.murphy@novakdruce.com
`Email: jay.guiliano@novakdruce.com
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`8
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`Certificate of Service Under 37 C.F.R. § 42.6(e)(4)
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`
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`I certify that I caused a true and correct copy of the forgoing to be served via
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`Patent No. 7,296,121
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`EXPRESS MAIL on the following:
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`Joseph M. Villeneuve
`Weaver Austin Villeneuve & Sampson LLP
`P.O. BOX 70250
`Oakland, CA 94612-0250
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`Jonathan D. Baker
`Farney Daniels PC
`411 San Borel Ave., Suite 350
`San Mateo, CA 94402
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`
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`
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`/s/ Michael Sander
`
`
`Michael Sander, Reg. No. 71,667
`msander@kenyon.com
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004-1007
`Tel: 212-425-7200
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`Dated: June 8, 2015
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`9
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