Paper 10
`
`Trials@uspto.gov
`Date Entered: February 2, 2016
`571-272-7822
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner
`v.
`
`ATI TECHNOLOGIES ULC,
`Patent Owner.
`____________
`
`Case IPR2015-01620
`Patent 7,095,945 B1
`____________
`
`
`
`BRIAN J. McNAMARA, RAMA G. ELLURU, and
`JAMES B. ARPIN, Administrative Patent Judges
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Motion For Joinder And
`Denying Institution Of Inter Partes Review
`37C.F.R. § 42.122(b), § 42.108
`
`
`

`

`Case IPR2015-01620
`Patent 7,095,945 B1
`
`
`INTRODUCTION
`
`LG Electronics, Inc. (“Petitioner”) filed a Petition, Paper 2 (“Pet.”),
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`requesting that we institute an inter partes review of claim 21 (the “challenged
`
`claim”) of U.S. Patent No. 7,095,945 B1 (Ex. 1001, “the ’945 Patent”). 35 U.S.C.
`
`§ 311. Petitioner identifies LG Electronics U.S.A., Inc. and LG Electronics
`
`MobileComm U.S.A. as real parties-in-interest with Petitioner. Pet. 1. Petitioner
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`also filed a Motion for Joinder with IPR2015-00321. Paper 3 (“Mot.”). In
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`IPR2015-00321, we instituted a trial on challenges to claim 18, but declined to
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`institute a trial of Petitioner’s challenge to claim 21. LG Electronics, Inc. v. ATI
`
`Techs. Inc., Case IPR2015-00321, slip op. at 13–17 (PTAB Jun 26, 2015) (Paper
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`20) (“Decision to Institute”). ATI Technologies ULS (“Patent Owner”) filed an
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`Opposition to the Motion (Paper 7, “Opp. to Mot.”) and Petitioner filed a Reply to
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`Patent Owner’s Opposition (Paper 8, “Reply”). On November 11, 2015, Patent
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`Owner also filed a Preliminary Response (Paper 9, “Prelim. Resp.”) to the Petition.
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`We have jurisdiction under 35 U.S.C. § 314, which provides that an inter
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`partes review may not be instituted unless the information presented in the petition
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`“shows that there is a reasonable likelihood that the petitioner would prevail with
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`respect to at least 1 of the claims challenged in the petition.”
`
`For the reasons set forth below, we exercise our discretion under 35 U.S.C.
`
`§ 315(c) and deny Petitioner’s Motion for Joinder with IPR2015-00321. In the
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`absence of joinder, the Petition is barred under 35 U.S.C. § 315(b). Therefore, we
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`do not institute a trial of challenged claim 21.
`
`PENDING LITIGATION
`
`The ’945 Patent is the subject of a patent infringement lawsuit brought by
`
`Advanced Micro Devices, Inc. in the Northern District of California: Advanced
`
`
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`2
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`

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`Case IPR2015-01620
`Patent 7,095,945 B1
`
`Micro Devices, Inc., et al., v. LG Electronics, Inc., et al., Case No. 3:14-cv-01012.
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`Pet. 1; Paper 6, 2. It is undisputed that Petitioner was served with a complaint in
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`this patent infringement suit more than one year before the filing date of the
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`Petition. Thus, absent joinder, where the one year time bar imposed by statute
`
`does not apply, the Petition is barred as untimely. 35 U.S.C. § 315(b), (c).
`
`THE ’945 PATENT (EXHIBIT 1001)
`
`The ’945 Patent explains that a transport stream (TS) consists of fixed length
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`packets based on a four byte header and 184 bytes of data payload obtained from
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`larger data blocks. Ex. 1001, col. 1, ll. 61–64. Elementary Streams are packetized
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`into fixed or variable length “packetized elementary stream (PES) packets and PES
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`packets are merged to create a program with its own system time clock (STC). Id.
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`at col. 1, l. 65–col. 2, l. 9. Elementary streams (ES) within one program have
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`periodic time stamps corresponding to the STC counter to indicate proper timing
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`for each ES. Id. at col. 2, ll. 10–12. Figures 1–4 illustrate conventional signal
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`structures. Id. at col. 2, ll. 49–50.
`
`The ’945 Patent discloses a system and method for displaying multimedia
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`programs in real time and/or storing them for subsequent display, including as a
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`time shifted display in which the stored portion of the program is played back
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`while new portions of the program are being stored. Ex. 1001, Abstract. The ’945
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`Patent discloses three modes of operation: (1) a receive only mode, i.e., the
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`Transparent Mode, in which a digital transport stream receiver (DTSR) receives a
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`live broadcast, which is accessed immediately and not saved, id. at col. 3, ll. 45–
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`53; (2) a Continuous Time Shifting Mode, in which a received program is stored in
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`the form of full transport stream packets or packetized elementary stream (PES)
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`packets; and (3) a Part-Time Shifting Mode, in which a time shifted program is
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`3
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`Case IPR2015-01620
`Patent 7,095,945 B1
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`played at a user defined speed, e.g., fast forward, while the host central processing
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`unit (CPU) receives and stores a real time event. Id. at col. 4, ll. 1–8.
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`The ’945 Patent discloses several programmed embodiments of the Part-
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`Time Shifting mode using this system. Id. at col. 6, l. 13–col. 7, l. 48.
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`CHALLENGED CLAIM
`
`Claim 21, which is drawn to a system, is the only claim at issue in this
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`proceeding and is reproduced below:
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`21. A system comprising:
`a first input node to receive a multiplexed packetized data
`stream that carries real-time multimedia programs;
`a first transport stream demultiplexer having an input coupled
`to the first input node to select packets of data having a
`predefined packet identifier and an output to provide the
`select packets of data;
`a storage device having a data port coupled to the output of
`the first transport stream demultiplexer to receive the
`select packets, wherein the storage device is to store the
`select packets;
`a first clock recovery module having an input coupled to the
`first input node, and an output, wherein the first clock
`recovery module is to generate a clock at the output based
`upon received timing information transmitted in packets
`of the multiplexed packetized data stream before the select
`packets are stored in the storage device; and
`a decoder having a first input coupled to the output of the first
`clock recovery module to receive the clock, a second input
`coupled the data port of the storage device to receive the
`select packets, and an output to provide decoded real-time
`data.
`
`
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`
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`4
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`Case IPR2015-01620
`Patent 7,095,945 B1
`
`
`ART CITED IN PETITION
`
`Date
`Reference
`Designation
`US 6,397,000 B1 May 28, 2002
`Hatanaka
`US 6,275,507 B1 Aug. 14, 2001
`Anderson
`Hoogenboom US 5,517,250
`May 14, 1996
`
`Exhibit No.
`(Ex. 1006)
`(Ex. 1010)
`(Ex. 1009)
`
`Claim
`
`21
`
`21
`
`BASIS OF PETITION
`
`Basis
`
`§ 103(a)
`
`§ 103(a)
`
`References
`
`Hatanaka and
`Hoogenboom
`Hatanaka and
`Anderson
`
`MOTION FOR JOINDER
`
`We begin our analysis by addressing Petitioner’s Motion for Joinder.
`
`Petitioner moves to join this proceeding with IPR2015-00321. Joinder may be
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`authorized when warranted, but the decision to grant joinder is discretionary.
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`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b). As indicated in the legislative history,
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`the Board determines whether to grant joinder on a case-by-case basis, taking into
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`account the particular facts of each case. See 157 Cong. Rec. S1376 (daily ed.
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`Mar. 8, 2011) (statement of Sen. Kyl) (when determining whether and when to
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`allow joinder, the Office may consider factors including the breadth or unusualness
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`of the claim scope, claim construction issues, and consent of the patent owner).
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`When exercising that discretion, the Board is mindful that patent trial regulations,
`
`including the rules for joinder, must be construed to secure the just, speedy, and
`
`inexpensive resolution of every proceeding. 37 C.F.R. § 42.1(b).
`
`On June 26, 2015, in IPR2015-00321, we entered a Decision to Institute an
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`inter partes review of claim 18 of the ’945 Patent as obvious over U.S. Patent No.
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`6,397,000 B1 (“Hatanaka”) alone and the combination of Hatanaka and U.S. Patent
`
`No. 6,951,058 B1 (“O’Connor”). LG Electronics, Inc. v. ATI Techs. Inc., Case
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`Case IPR2015-01620
`Patent 7,095,945 B1
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`IPR2015-00321, slip op. at 17–19 (PTAB June 26, 2015) (“IPR2015-00321 Dec.to
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`Inst.”). In that Decision to Institute, we declined to institute a trial on Petitioner’s
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`challenge to claim 21 under 35 U.S.C. § 102 (e) as anticipated by Hatanaka. Id. at
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`13–17.
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`On July 24, 2015, Petitioner filed the Petition in this IPR2015-01620,
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`asserting that claim 21 is obvious under 35 U.S.C. § 103(a) over Hatanaka in view
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`of U.S. Patent No. 5,517,250 (“Hoogenboom”) and obvious under 35 U.S.C.
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`§ 103(a) over Hatanaka in view of U.S. Patent No. 6,275,507 (“Anderson”).
`
`Neither Hoogenboom nor Anderson were cited in IPR2015-00321. Petitioner also
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`filed its Motion For Joinder of this proceeding with IPR2015-00321. On August
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`24, 2015, Patent Owner filed its Opposition to Petitioner’s Motion For Joinder. On
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`September 24, 2015, Petitioner filed its Reply.
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`Petitioner argues that Joinder is permissible under our rules and that, at the
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`time Petitioner filed its motion, Joinder would minimally impact the current trial
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`schedule. Mot. 6–9. Petitioner further argues that Joinder would be efficient and
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`not prejudice Patent Owner because this proceeding involves the same parties and
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`same subject matter as that in IPR2015-00321. Id. at 4–6. Specifically, Petitioner
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`asserts that its arguments in the Petition regarding Hatanaka overlap the arguments
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`it made in its petition in IPR2015-00321 (“First Petition”). Id. at 4–5. Petitioner
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`further notes that the technical expert supporting its contentions in this proceeding
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`is the same as the expert Petitioner employed in IPR2015–00321.
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`Patent Owner opposes Joinder on the grounds that Petitioner has failed to
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`meet its burden to demonstrate that Joinder is appropriate. Opp. to Mot. 3. Patent
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`Owner contends (1) that Petitioner is not entitled to use our Decision to Institute in
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`IPR2015-00321 as a roadmap to obtain a “‘second bite at the apple’”; (2) that
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`Case IPR2015-01620
`Patent 7,095,945 B1
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`Petitioner has failed to provide good cause or reason to warrant a “‘second bite at
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`the apple’”; and, (3) that the facts of the case merit denial of Joinder. Id. at 4.
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`Petitioner’s Reply does not address Patent Owner’s “second bite at the
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`apple” argument directly, but contends that Patent Owner would not be prejudiced
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`by the addition of two new references because of the overlapping subject matter
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`and because the primary reference, Hatanaka, is already a reference in the
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`instituted inter partes review. Reply 4–5. According to Petitioner, it would not be
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`a substantial burden for Patent Owner to respond to two additional references
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`directed at one claim, where the subject matter overlaps an already instituted inter
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`partes review. Id. Petitioner cites Patent Owner’s response to its petition in
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`related case IPR2015-00325, where Patent Owner has presented four new
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`declarations and over 100 exhibits, as further evidence that Patent Owner would
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`not incur additional cost or effort. Id. at 5.
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`Although the parties dispute the propriety of same party Joinder, we need
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`not address this issue because we are not persuaded that the circumstances in this
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`proceeding warrant Joinder regardless of whether same party joinder is
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`permissible. Petitioner cites our Decision in Samsung v. Virginia, Case IPR2014-
`
`00557, slip op. at 18 (PTAB June 13, 2014) (Paper 10) for the proposition that,
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`given the undisputed facts of this case, we should grant Petitioner’s motion for
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`joinder because it will result in a “minimal amount of additional work” for Patent
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`Owner, and the Petition and the First Petition involve “the same patent and
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`parties… substantially the same exhibits… [and] substantial overlap in the asserted
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`references.” Reply 2. While in some cases, we have permitted joinder as an
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`expedient way to obtain a just resolution of all issues, e.g., Samsung v. Virginia,
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`Case IPR2014-00557, slip op. at 18 (PTAB June 13, 2014) (Paper 10), in others,
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`particularly where our Decision to Institute has been used as a roadmap to remedy
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`Case IPR2015-01620
`Patent 7,095,945 B1
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`deficiencies in an earlier petition, we exercised our discretion under 35 U.S.C.
`
`§ 315(c) and declined to grant joinder. Samsung Electronics Co. Ltd. et al. v.
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`Affinity Labs of Texas, LLC, Case IPR2015-00820, slip op. at 4 (PTAB May 15,
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`2015)(Paper 12); Atoptech, Inc. v. Synopsys, Inc., Case IPR2015-00760, slip. op.
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`at 8–9 (PTAB July 21, 2015) (Paper 14).
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` “A decision to institute review on some claims should not act as an entry
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`ticket, and a how-to guide . . . to challenge those claims which [the petitioner]
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`unsuccessfully challenged in the first petition.” ZTE Corp. et al. v. ContentGaurd
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`Holdings, Inc., Case IPR2013-00454, slip op. at. 5–6 (PTAB Sept. 25, 2013)
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`(Paper 12). The Board is concerned about encouraging, unnecessarily, the filing of
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`petitions that are partially inadequate. Id. By “[p]ermitting second chances” the
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`Board needs to “be mindful not only of this proceeding, but of ‘every proceeding’”
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`when exercising its discretion, for such cases will inevitably “tie[] up the Board’s
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`limited resources.” See Samsung Elecs., et al. v. Rembrandt Wireless Tech., LP,
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`Case IPR2015-00555, slip op. at 8 (PTAB June 19, 2015) (Paper 20) (exercising
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`discretion under 35 U.S.C. § 325(d) to deny institution and finding motion for
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`joinder moot).
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`We are not persuaded by Petitioner’s contention that its arguments
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`concerning anticipation by Hatanaka and its challenge to claim 21 based on the
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`combination of Hatanaka and other references in the Petition overlap the
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`arguments Petitioner made in the First Petition in IPR2015-00321.1 Our Decision
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`
`1 In its Preliminary Response, Patent Owner argues that the Petition is redundant to
`the First Petition, that Hatanaka is structurally different from claim 21 and that
`Hatanaka suffers from several deficiencies not cured by Hoogenboom or
`Anderson. Prelim. Resp. 2–3. In particular, Patent Owner contends that Hatanaka
`does not teach the claimed storage device or the claimed first clock recovery
`module. Id.
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`Case IPR2015-01620
`Patent 7,095,945 B1
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`to Institute in IPR2015-00321 noted deficiencies in the First Petition. IPR2015-
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`00321 Dec. to Inst. 13–17. Aside from its claim charts, the First Petition provides
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`only 14 lines of text explaining its analysis of how Hatanaka demonstrates
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`anticipation of claim 21. IPR2015-00321, Pet. 38–39. We specifically noted
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`Petitioner’s contention concerning the recitation in claim 21 “wherein the first
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`clock recovery module is to generate a clock at the output based upon received
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`timing information transmitted in packets of the multiplexed packetized data
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`stream before the select packets are stored in the storage device.” Id. at 22.
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`Petitioner argued that clock recovery unit 13 of Hatanaka is the claimed clock
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`recovery module, but did not explain how in Hatanaka the production of a time
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`stamp prior to storing the packets teaches generation of a clock, as claimed.
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`IPR2015-00321 Dec. to Inst. 16. We also noted that the First Petition did not
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`address how in Hatanaka the generation of a stable clock by the clock recovery
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`module from clock 46 discloses the limitations recited in claim 21 of the ’945
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`Patent. Id.
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`The Petition abandons the First Petition’s challenge to claim 21 as
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`anticipated under 35 U.S.C. § 102(e) by Hatanaka and asserts new challenges, with
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`a different statutory basis, i.e., obviousness under 35 U.S.C. § 103(a) based on the
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`combination of Hatanaka and Hoogenboom and Hatanaka and Anderson. In the
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`Petition, guided by our Decision to Institute in IPR2015-00321, Petitioner cites two
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`new references and provides explanation missing from the First Petition
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`concerning its theory of how Hatanaka discloses a clock recovery module based on
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`received timing information transmitted in packets of the multiplexed data stream.
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`Pet. 15–17. Petitioner also cites Hoogenboom as explicitly disclosing generating a
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`clock at the output based upon received timing information transmitted in packets
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`of the multiplexed packetized data stream before the select packets are stored in the
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`Case IPR2015-01620
`Patent 7,095,945 B1
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`storage device. Id. at 17, 21–26. According to Petitioner, it would have been
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`obvious to one of ordinary skill to combine this disclosure with Hatanaka’s system.
`
`Id. Petitioner also cites to Anderson as disclosing a clock recovery module. Pet.
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`30–34.
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`In consideration of the above, we agree with the Patent Owner that joinder is
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`not appropriate in this case because the Petition uses our Decision to Institute in
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`IPR2015-00321 as a guide to remedy deficiencies in the First Petition. Although
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`there may be efficiencies to gain from addressing the same claims in inter partes
`
`review that are at issue in pending district court litigation, permitting second
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`chances without constraint undermines judicial efficiency by expending our
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`resources on issues that were not adequately presented the first time. Atoptech,
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`Inc., Case IPR2015-00760, slip. op. at 8–9.
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`Petitioner has not demonstrated a reasoned justification for its failure to
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`assert in the First Petition the obviousness challenges it asserts in this Petition.
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`Petitioner presents no argument or evidence that Anderson or Hoogenboom was
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`not known or available at the time Petitioner filed the First Petition. As discussed
`
`above, the arguments in the Petition concerning Hatanaka and claim 21 were
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`cursory and inadequate. The Petition now presents arguments that Petitioner could
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`have made in the First Petition, had it chosen to do so. The Petition is aimed at
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`matters identified in the Decision to Institute in IPR2015-00321 as not adequately
`
`addressed to justify inter partes review. See Travelocity.com L.P. v. Cronos
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`Technologies, LLC, Case CBM2015-00047, slip op. at 13 (PTAB June 12, 2015)
`
`(Paper 7) (“[A] decision on a petition for covered business method review is not
`
`simply part of a feedback loop by which a petitioner may perfect its challenges
`
`through a subsequent filing.”).
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`Case IPR2015-01620
`Patent 7,095,945 B1
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`In consideration of the above facts and circumstances, we exercise our
`
`discretion under 35 U.S.C. § 315(c) and deny Petitioner’s Motion for Joinder.
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`DECISION ON PETITION
`
`Institution of inter partes review is barred when the petition is filed more
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`than one year after the petitioner is served with a complaint alleging infringement
`
`of the patent. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b).
`
`The record indicates that Petitioner was served with a complaint more than
`
`one year before filing the Petition. Accordingly, in view of our decision to deny
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`Petitioner’s Motion for Joinder, we deny the Petition because it was not filed
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`within the time limit imposed by 35 U.S.C. § 315(b)
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`In consideration of the above, we do not institute inter partes review.
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`ORDER
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`Case IPR2015-01620
`Patent 7,095,945 B1
`
`
`PETITIONER:
`
`Robert G. Pluta
`Amanda K. Streff
`MAYER BROWN LLP
`rpluta@mayerbrown.com
`astreff@mayerbrown.com
`AMDIPR@mayerbrown.com
`
`
`
`PATENT OWNER:
`
`Michael B. Ray
`Lestin L. Kenton, Jr.
`Michael D. Specht
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`mray-PTAB@skgf.com
`lkenton-PTAB@skgf.com
`mspecht-PTAB@skgf.com
`
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`12
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