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
`____________
`
`PATENT OWNER’S OPPOSITION
` TO MOTION FOR JOINDER
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.
`Petitioner,
`
`v.
`
`ATI TECHNOLOGIES ULC.
`Patent Owner.
`
`Case IPR2015-01620
`
`Patent 7,095,945
`____________
`
`PATENT OWNER’S OPPOSITION
` TO MOTION FOR JOINDER
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`Table of Contents
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`IPR2015-01620
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`I.
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`Introduction .......................................................................................................... 1
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`II. Background .......................................................................................................... 2
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`III. Argument ............................................................................................................. 3
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`A. LG has not met its burden in demonstrating why it should be entitled to a
`“second-bite at the apple.” ...................................................................................... 3
`1. LG is not entitled to use the First Petition’s Institution Decision as a roadmap
`for its Second Petition. ............................................................................................ 4
`2. LG fails to provide a good cause or reason to warrant a “second bite at the
`apple.” ..................................................................................................................... 6
`3. The facts of this case merit denial of joinder. .................................................. 8
`B. The Board should deny LG’s Motion because joinder will prejudice ATI. .. 12
`C. The Board should deny LG’s Motion because the statute does not authorize
`the joinder of the same party to an instituted IPR. ............................................... 14
`IV. Conclusion ......................................................................................................... 15
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`- ii -
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`Table of Authorities
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`IPR2015-01620
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`Cases
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`Amneal Pharm., LLC v. Endo Pharm. Inc.,
` IPR2014-01365, Paper 13 (Feb. 4, 2015) ............................................................... 6
`
`Ariosa Diagnostics v. Isis Innovation, Ltd.,
`
` IPR2013-00250, Paper 25 (Sept. 3, 2013) ............................................................. 7
`
`Butamax Advanced Biofuels LLC. v. Gevo, Inc.,
` IPR2014-00581, Paper 8 (Oct. 14, 2015) ............................................................... 4
`
`Dell Inc. v. Network-1 Security Sols., Inc.,
` IPR2013-00385, Paper 17 (July 29, 2013) .................................................... 11, 12
`
`Ericsson Inc. et al. v. Intellectual Ventures II LLC,
` IPR2015-01077, Paper 11 (Jul. 10, 2015) .............................................................. 7
`
`Medtronic, Inc. et al. v. Endotach LLC,
` IPR2014-00695, Paper 18 (Sept. 25, 2014) ............................................. 1, 5, 8, 13
`
`Microsoft Corp. v. Proxyconn, Inc.,
` IPR2013-00109, Paper 15 (Feb. 25, 2013) ............................................................. 6
`
`Oxford Nanopore Technologies Ltd. v. University of Washington,
` IPR2015-00057, Paper 10 (Apr. 27, 2015) ........................................................... 11
`
`Samsung Electronics Co. Ltd. et al. v. Affinity Labs of Texas, LLC,
` IPR2015-00820 (May 15, 2015) ............................................................................. 4
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`Samsung Electronics, et al. v. Rembrandt Wireless Tech., LP,
` IPR2015-00555, Paper 20 (Jun. 19, 2015) .........................................................6, 9
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`IPR2015-01620
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`Samsung v. Affinity,
` IPR2015-00820, Paper 12 (May 15, 2015) ........................................................... 10
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`Samsung v. Rembrandt,
` IPR2015-00555, Paper 20 (Jun. 19, 2015) .........................................................8, 9
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`Samsung v. Virginia,
` IPR2014-00557, Paper 10 (Jun. 13, 2014) ........................................................... 13
`
`SAP Am. Inc. v. Clouding IP, LLC,
` IPR2014-00306, Paper 13 (May 19, 2014) ........................................................... 12
`
`Skyhawke Tech., LLC v. L&H Concepts, LLC,
` IPR2014-01485, Paper 13 (Mar. 20, 2015) .......................................................... 14
`
`Sony Corp. and Hewlett-Packard Co. v. Network-1 Security Sols., Inc.,
` IPR2013-00495, Paper 13 (Sept. 16, 2013) .......................................................... 12
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`Sony Corp. v. Yissum,
`
` IPR2013-00327, Paper 15 (Sept. 24, 2013) ........................................................... 7
`
`Sony Corp. v. Yissum,
` IPR2013-00327, Paper 4 (Jul. 3, 2013) .......................................................... 7, 14
`
`Target Corp. v. Destination Maternity Corp.,
` IPR2014-00508, Paper 3 (Mar. 14, 2014). ............................................................. 8
`
`Target Corp. v. Destination Maternity Corp.,
` IPR2014-00508, Paper 31 (Feb. 12, 2015) ............................................................. 8
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`Toyota Motor Corp. v. American Vehicular Sciences LLC,
` IPR2015-00262, Paper 10 (Jan. 29, 2015) ..........................................................5, 9
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`ZTE Corp. et al. v. ContentGaurd Holdings, Inc.,
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` IPR2013-00454, Paper 12 (Sept. 25, 2013) ........................................................... 5
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`IPR2015-01620
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`Statutes
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`35 U.S.C. § 315(b) ........................................................................................... passim
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`35 U.S.C. § 315(c) .......................................................................................... 1, 4, 14
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`Rules
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`37 C.F.R. § 42.20(c) ................................................................................................... 3
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`EXHIBIT LIST
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`IPR2015-01620
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`Ex. No.
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`2001
`
`2002
`
`Description
`Invalidity Contentions served by Counsel for LG Electronics, Inc. et
`al., dated October 2, 2014, Case No. 3:14-cv-1012-SI
`Exhibit I-01 (945) US5517250 - Hoogenboom Service Chart
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`I.
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`Introduction
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`Patent Owner, ATI Technologies ULC. (hereinafter “ATI”), respectfully
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`requests that the Board deny LG’s Motion for Joinder. LG’s petition is time barred
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`under 35 U.S.C. § 315(b), because it was filed more than a year after LG was
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`served with a complaint alleging infringement of U.S. Patent No. 7,095,945 (the
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`“’945 Patent”). LG now seeks to circumvent the one-year statutory bar by filing a
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`motion for joinder (Paper 3; “Motion”) under 35 U.S.C. § 315(c). However, the
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`Board has repeatedly denied joinder where a petitioner attempts to use a prior
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`institution decision as a roadmap for remedying challenges
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`that were
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`unsuccessfully advanced in the first-filed petition, especially where the § 315(b)
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`bar would apply absent joinder. See, e.g., Medtronic, Inc. et al. v. Endotach LLC,
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`IPR2014-00695, Paper 18, pp. 3-4 (Sept. 25, 2014).
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`Consistent with Board precedent, the Board should deny LG’s motion for
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`joinder because LG is not entitled to a “do over” of its failed previous attempt to
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`challenge claim 21 of the ’945 Patent. LG’s Second Petition is nothing more than a
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`“second bite at the apple” and an effort to remedy LG’s prior deficient challenge
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`against claim 21. LG’s arguments and the facts surrounding this case, far from
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`supporting joinder, actually weigh heavily against joinder. LG’s Motion fails to
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`provide any good reasons to merit joinder at this stage. Nor does the Motion
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`address similar cases holding joinder inappropriate. Lastly, contrary to LG’s self-
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`IPR2015-01620
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`serving reasoning, joinder will indeed prejudice ATI. The Board should, therefore,
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`deny LG’s Motion.
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`II. Background
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`
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`On or about July 12, 2012, ATI provided LG with a claim chart
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`demonstrating LG’s infringement of the ’945 Patent. After years of unsuccessful
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`licensing discussions, on March 5, 2014, ATI served LG a complaint alleging
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`infringement of the ’945 Patent. On December 10, 2014, after more than nine
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`months of litigation, LG filed an inter partes review (“IPR”) petition against the
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`’945 Patent challenging claims 18 and 21 (the “First Petition,” IPR2015-00321).
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`The First Petition raised five grounds of unpatentability, including three separate
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`grounds against claim 21. The Board instituted trial for claim 18 and denied
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`institution for claim 21. IPR2015-00321, Paper 20 (Jun. 26, 2015).
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`
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`In its Institution Decision, the Board held that the petition failed to advance
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`any prior art that taught key limitations of claim 21. Id. at 11-17, 20-22. The
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`following table summarizes the grounds in the First Petition and the Board’s
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`corresponding decision:
`
`Ground Claim Challenge
`1
`18, 21 Claims 18 and 21 are anticipated by U.S.
`Patent No. 6,233,389 to Barton
`Claim is obvious over U.S. Patent No.
`6,397,000 to Hatanaka
`Claim 21 is anticipated by Hatanaka
`
`2
`
`3
`
`18
`
`21
`
`Board
`Decision
`Not Instituted
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`Instituted
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`Not Instituted
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`IPR2015-01620
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`Board
`Decision
`Instituted
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`Not Instituted
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`Ground Claim Challenge
`4
`18
`Claim 18 is obvious over Hatanaka in view
`of U.S. Patent No. 6,591,058 to O’Connor
`Claim 21 is obvious over U.S. Patent No.
`5,521,922 to Fujinami
`
`5
`
`21
`
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`On July 24, 2015—over 16 months after being served with a complaint—LG
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`filed a second petition against the ’945 Patent, which again sought to invalidate
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`claim 21 (the “Second Petition,” IPR2015-01620). In an attempt to avoid the one
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`year time limitation imposed by § 315(b), LG also filed the instant Motion seeking
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`to join the Second Petition with the instituted proceeding, IPR2015-00321.
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`LG’s Second Petition presents two new grounds for invalidating claim 21
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`based on the same primary reference, Hatanaka, and two newly presented
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`references—U.S. Patent No. 5,517,250 to Hoogenboom and U.S. Patent No.
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`6,275,507 to Anderson—and a new supporting expert declaration. Absent a
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`decision by the Board to join this proceeding with IPR2015-00321, the Second
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`Petition is time-barred under § 315(b).
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`III. Argument
`A. LG has not met its burden in demonstrating why it should be entitled to
`a “second-bite at the apple.”
`
`The Board should deny LG’s Motion because LG fails to meet its burden
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`under 37 C.F.R. § 42.20(c) to demonstrate that joinder is appropriate. Joinder is
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`inappropriate for at least three reasons: (i) LG is not entitled to use the prior
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`IPR2015-01620
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`Institution Decision as a roadmap for its Second Petition—“second bite at the
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`apple”; (ii) LG fails to provide a good cause or reason to warrant a “second bite at
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`the apple”; and (iii) the facts of this case merit denial of joinder. Accordingly, the
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`Board should exercise its discretion under § 315(c) to deny LG’s Motion and
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`dismiss the Second Petition, which is improper under § 315(b) .
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`1. LG is not entitled to use the First Petition’s Institution Decision as
`a roadmap for its Second Petition.
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`The Board should deny LG’s Motion because LG’s Second Petition seeks
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`nothing more than “a second bite at the apple”—a second chance to challenge the
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`same claim that was previously challenged and denied by the Board.
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`Numerous Board decisions have denied joinder when the petitioner attempts
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`to use a prior institution decision as a roadmap for remedying challenges that were
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`unsuccessfully advanced in the first petition. This is especially true when the §
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`315(b) bar would apply absent joinder. See, e.g., Butamax Advanced Biofuels LLC.
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`v. Gevo, Inc., IPR2014-00581, Paper 8, pp. 12-13 (Oct. 14, 2015) (“the four
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`obviousness grounds are ‘second bites at the apple,’ which use our prior decision
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`as a roadmap to remedy [petitioner’s] prior, deficient challenge”); Samsung
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`Electronics Co. Ltd. et al. v. Affinity Labs of Texas, LLC, IPR2015-00820, Paper
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`12, p. 4 (May 15, 2015) (“[t]his appears . . . to be a case where Petitioner seeks to
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`use our Decision to Institute . . . as a guide to remedy deficiencies in the earlier
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`filed petition, i.e. a ‘second bite at the apple’”); Toyota Motor Corp. v. American
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`Vehicular Sciences LLC, IPR2015-00262, Paper 10, p. 3 (Jan. 29, 2015);
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`Medtronic, IPR2014-00695, Paper 18, at 3-4.
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`Such is the case here. LG’s Second Petition challenges claim 21 and uses the
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`prior Institution Decision as a roadmap to remedy LG’s original deficient petition.
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`Specifically, the Second Petition relies on the same primary reference, Hatanaka,
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`which was previously rejected in IPR2015-00321, and adds two new references to
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`address the First Petition’s shortcomings. See Paper 3, at 2-3. Thus, armed with
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`knowledge of the deficiencies identified by the Board in the Institution Decision,
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`LG now inappropriately requests the Board for a do-over. Such tactics should not
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`be allowed, and LG’s Motion should be denied.
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`The Board has stated that it is concerned about encouraging, unnecessarily,
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`the filing of petitions which are partially inadequate. See ZTE Corp. et al. v.
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`ContentGaurd Holdings, Inc., IPR2013-00454, Paper 12, pp. 5-6 (Sept. 25, 2013).
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`The Board reasoned that “[a] decision to institute review on some claims should
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`not act as an entry ticket, and a how-to guide . . . to challenge those claims which
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`[the petitioner] unsuccessfully challenged in the first petition.” Id. By “[p]ermitting
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`second chances” the Board needs to “be mindful not only of this proceeding, but of
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`every proceeding” when exercising its discretion, for such cases will inevitably
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`“tie[] up the Board’s limited resources.” See Samsung Electronics, et al. v.
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`IPR2015-01620
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`Rembrandt Wireless Tech., LP, IPR2015-00555, Paper 20, p. 8 (Jun. 19, 2015).
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`Accordingly, the Board, keeping these concerns in mind, should deny LG’s belated
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`attempt to use a Second Petition to remedy its prior deficient arguments.
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`2. LG fails to provide a good cause or reason to warrant a “second
`bite at the apple.”
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`LG’s Motion fails to identify any new circumstances or good reasons that
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`merit giving LG a second chance to challenge the patentability of claim 21 in its
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`Second Petition. Generally, “when a § 315(b) bar would apply absent joinder,” the
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`Board “hesitate[s] to allow a petitioner a second bite one month after institution in
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`a first case, at the expense of . . . potential prejudice[] to Patent Owner, absent a
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`good reason for doing so.” See Amneal Pharm., LLC v. Endo Pharm. Inc.,
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`IPR2014-01365, Paper 13, p. 5 (Feb. 4, 2015) (emphasis added).
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`In rare, exceptional cases, the Board has previously granted joinder—when
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`the § 315(b) bar would otherwise apply—where parties have demonstrated “good
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`cause” for joinder. See Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper
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`15, at 3 (Feb. 25, 2013). For example, the Board has granted joinder where a patent
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`owner asserted additional claims against the petitioner in a concurrent district court
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`litigation and the petitioner “proceeded expeditiously in filing a second Petition
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`after learning that additional claims were being asserted.” Id.; see also Ericsson
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`Inc. et al. v. Intellectual Ventures II LLC, IPR2015-01077, Paper 11 (Jul. 10,
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`2015); Sony Corp. v. Yissum, IPR2013-00327, Paper 15 (Sept. 24, 2013). The
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`Board has also granted joinder when a new product was launched leading to a
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`threat of new assertions of infringement. See Ariosa Diagnostics v. Isis Innovation,
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`Ltd., IPR2013-00250, Paper 25 (Sept. 3, 2013). Here, there is no similar “good
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`cause” or “good reason” as to why LG should be allowed a do-over or “second bite
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`at the apple” despite the § 315(b) bar. No new claims were asserted against LG
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`after its First Petition, nor was a new threat of infringement present.
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`Moreover, LG’s contention that the Board should allow joinder because
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`“courts have joined petitions from the same party in circumstances similar to
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`these” is meritless. Paper 3, at 6-7 (emphasis added). LG cites to Sony and Target
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`for this contention, however, both Sony and Target represent proceedings where
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`petitioners presented good cause to warrant joinder, which is in stark contrast to
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`LG’s Motion. For example, in Sony, the petitioner filed a second petition (prior to
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`the first institution decision), because the patent owner asserted new claims in a
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`concurrent district court litigation after the first petition was filed. See Sony Corp.
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`v. Yissum, IPR2013-00327, Paper 4, pp. 1-2, 5 (Jul. 3, 2013). And in the second
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`petition, Sony only challenged the newly asserted claims. Id.
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`In Target, the petitioner provided good reason to merit joinder where it
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`relied on a reference previously unknown to the Petitioner—Japanese office action
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`revealing Japanese Utility Model No. 3086624—in its second petition. See Target
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`IPR2015-01620
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`Corp. v. Destination Maternity Corp., IPR2014-00508, Paper 31 (Feb. 12, 2015);
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`Paper 3, at 2, 5-6 (Mar. 14, 2014). This newly discovered reference was revealed to
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`the petitioner by the patent owner only after the institution decision. See id. LG
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`has neither the Sony facts (newly asserted claim and second petition filed prior to
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`institution decision) nor the Target facts (newly discovered prior art) in its favor.
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`Both cases are
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`thus distinguishable and do not support LG’s position.
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`Accordingly, the Board should deny LG’s Motion, because LG fails to apprise the
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`Board of any justifiable “reason that merits a second chance.” See Samsung v.
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`Rembrandt, IPR2015-00555, Paper 20, p. 8 (Jun. 19, 2015).
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`3. The facts of this case merit denial of joinder.
`The Board should also deny LG’s Motion because previous Board decisions
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`have rejected joinder under similar fact patterns. See section III.A.1. LG fails to
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`provide any reasons as to why it could not advance the grounds present in the
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`Second Petition in the First Petition. Moreover, the cases cited by LG to warrant
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`joinder are all factually distinguishable. Joinder is not automatic; it is a fact
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`specific inquiry. The Board determines “whether to grant joinder on a case-by-case
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`basis, taking into account the particular facts of each case.” See Medtronic,
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`IPR2014-00695, Paper 18, at 4.
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`
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`Similar to the instant proceeding, the Board has previously denied joinder
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`when a petitioner possessed, at the time of filing the first petition, the references
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`asserted in the later-filed second petition. See, e.g., Toyota Motor Corp., IPR2015-
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`IPR2015-01620
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`00262, Paper 10, at 3 (determining that the “Petitioner could have presented in the
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`earlier petition the grounds and arguments it now asserts, but it did not do so”). For
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`example, in Samsung v. Rembrandt, the Board denied joinder where the petitioner
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`unsuccessfully advanced certain grounds in an earlier IPR proceeding and filed a
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`subsequent IPR after the § 315(b) bar. IPR2015-00555, Paper 20, at 7-9. The
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`Board concluded that there was no justification for joinder:
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`The difference between what Petitioner presents in this proceeding
`and what Petitioner presented in [the first IPR] with respect to claim
`21 of the ’228 patent is that Petitioner now offers Siwiak as support
`for the asserted obviousness . . . . Petitioner, however, presents no
`argument or evidence that Siwiak was not known or available to it at
`the time of filing IPR ’892.
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`Id. at 7-8 (internal citations omitted) (emphasis added).
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`As in Samsung, the Board should deny LG’s Second Petition, because it
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`involves the same patent claims challenged in its First Petition and uses art that
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`was previously known or available to LG. Notably, LG’s Motion fails to provide
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`any explanation why it could not have presented the new references—
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`Hoogenboom and Anderson—in its First Petition. LG admits that it advances these
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`two additional references to support its ground of unpatentability “based on the
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`same primary reference as the instituted ground” (Paper 3 at 7), but fails to
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`IPR2015-01620
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`articulate any “persuasive reason[s] why, using reasonable efforts, the [references]
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`could not have been identified and relied upon in the earlier, timely-filed
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`petition[].”See Samsung v. Affinity, IPR2015-00820, Paper 12, p. 4 (May 15,
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`2015). In fact, LG provides no reason at all for its delayed reliance on the
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`Hoogenboom and Anderson references.
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`Indeed, LG was aware of the Hoogenboom reference at the time of filing,
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`but choose not to rely on it in its First Petition. As evidence of this, LG’s invalidity
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`contentions dated October 1, 2014, in the concurrent litigation cited to the
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`Hoogenboom reference (more than two months prior to LG’s filing of the first IPR
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`petition on December 10, 2014). See Ex. 2001 at 150-151;1 see also Ex. 2002.
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`Additionally, the Anderson reference is a published U.S. patent. See Ex. 1010. LG
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`has not argued that Anderson was not also known to LG at the time that the instant
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`IPR petition was filed or that Anderson could not have been included in the first
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`IPR petition.
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`Further, LG inaccurately argues that the subject matter and issues regarding
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`claim 21 are “nearly identical” or “overlap in subject matter” with claim 18 and the
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`grounds instituted in IPR2015-00321. See Paper 3, at 4-7. Independent claims 18
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` Exhibit 2001 is dated October 1, 2014. However, LG served Exhibit 2001 to ATI
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` 1
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`on October 2, 2015.
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`IPR2015-01620
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`and 21, contrary to LG’s assertions, are not identical.2 Claims 18 and 21 are of
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`different scope and recite different claim limitations and structures. Indeed, LG has
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`already acknowledged the differences between the claims when they presented
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`different grounds of unpatentability against each claim in its First Petition.
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`Similarly, LG’s argument that joinder should be granted because the
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`“subject matter of [claims 18 and 21] and the issues in this proceeding are nearly
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`identical,” which “weighs in favor of joinder” is misplaced. Paper 3, at 4-5
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`(emphasis added). First, LG is wrong on the facts—as ATI has shown, the issues
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`raised in IPR2015-00321 are materially and substantially different from the issues
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`raised by the Second Petition.
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`Second, the cases cited by LG are significantly different from the present
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`situation. LG relies on the following proceedings when advancing this argument:
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`Dell Inc. v. Network-1 Security Sols., Inc., IPR2013-00385, Paper 17 (July 29,
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`2013), SAP Am. Inc. v. Clouding IP, LLC, IPR2014-00306, Paper 13 (May 19,
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` 2
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` Moreover, LG’s reliance on Oxford Nanopore Tech. Ltd. v. Univ. of Washington
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`is misplaced because the two proceedings in Oxford involved the same claim and
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`the same reference, not a different claim and different references, as in the current
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`proceeding. IPR2015-00057, Paper 10, p. 23 (Apr. 27, 2015)
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`IPR2015-01620
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`2014), and Sony Corp. and Hewlett-Packard Co. v. Network-1 Security Sols., Inc.,
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`IPR2013-00495, Paper 13 (Sept. 16, 2013). However, these cases are easily
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`distinguishable over the present proceeding. In these cases, the Board permitted
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`joinder of parties, rather than joinder of issues, because the grounds of
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`unpatentability were “identical” to those in the other party’s petition. See SAP Am.
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`Inc., IPR2014-00306, Paper 13, at 3 (emphasis added). And the petitions “raise[d]
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`no new issues beyond what [was] already before the Board in the existing
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`proceeding.” See Dell, Inc., IPR2013-00385, Paper 17, at 7; see also Sony Corp.
`
`IPR2013-00495, Paper 13, at 5.
`
`Unlike Dell, Sony, and SAP, LG does not seek a joinder of parties to an
`
`identical petition raising identical issues. LG’s Second Petition (i) is not identical
`
`to its First Petition; (ii) raises new grounds of unpatentability; and (iii) presents
`
`new issues not previously before the Board in the first proceeding. Accordingly,
`
`Board precedent strongly supports that joinder is inappropriate and that LG’s
`
`motion should be denied.
`
`B. The Board should deny LG’s Motion because joinder will prejudice
`ATI.
`
`Granting joinder will needlessly prejudice ATI and substantially increase the
`
`costs. LG’s self-serving suggestion to “accelerate[] the due date on which Patent
`
`Owner’s preliminary response [is] due” to minimize the impact of the current trial
`
`
`
`
`- 12 -
`
`
`
`IPR2015-01620
`
`
`
`schedule clearly prejudices ATI. See Paper 3, at 8-9. Here, ATI will have to review
`
`and substantively address new arguments for two new references that LG seeks to
`
`add to mitigate the deficiencies identified by the Institution Decision. See
`
`Medtronic, IPR2014-00695, Paper 18, at 8 (determining that the patent owner was
`
`prejudiced where petitioner presented and relied on “three new grounds,”
`
`containing two new “references never cited by [p]etitioner before institution” even
`
`though there was an “overlap in relation to one reference,” which was previously
`
`cited in the institution decision). ATI is entitled to an adequate period of time to
`
`analyze LG’s Second Petition and formulate a sufficient response to protect its
`
`patent rights. ATI will undoubtedly be negatively impacted and prejudiced if LG’s
`
`proposition is accepted.
`
`Further, LG’s reliance on Samsung v. Virginia, IPR2014-00557, Paper 10
`
`(Jun. 13, 2014) and Sony v. Yissum to support this accelerated schedule is also
`
`misplaced. Paper 3, at 7. The petitioner in Samsung did not rely on any additional
`
`references; all of the references were previously cited in the original petition. See
`
`IPR2014-00557, Paper 10, at 17-18. Moreover, the dependent claims that were
`
`joined to the proceeding only added one new limitation that was already addressed
`
`in a corresponding IPR proceeding. See id. (“the only additional subject matter
`
`added . . . [is] the Seaman reference” which has been “addressed already in the
`
`context of
`
`trials concerning unpatentability of certain claims
`
`in related
`
`
`
`
`- 13 -
`
`
`
`IPR2015-01620
`
`
`
`proceedings”). Similarly, in Sony, the second petition was filed prior to the
`
`institution decision and only added one reference allowing the patent owners ample
`
`time to review and address Sony’s petition. See Sony, IPR2013-00327, Paper 4, at
`
`5. Unlike Samsung and Sony, ATI will be prejudiced with the proposed schedule
`
`suggested by LG and, therefore, the Board should deny its Motion.
`
`C. The Board should deny LG’s Motion because the statute does not
`authorize the joinder of the same party to an instituted IPR.
`
`Not only is joinder of the Second Petition unwarranted for the reasons
`
`discussed above, joinder is also impermissible under a proper interpretation of 35
`
`U.S.C. § 315(c). Properly construed, the statute does not allow joinder of a
`
`petitioner that is already a party to the instituted review. See Skyhawke Tech., LLC
`
`v. L&H Concepts, LLC, IPR2014-01485, Paper 13, p. 3 (Mar. 20, 2015). In
`
`pertinent part, § 315(c) provides: “If the Director institutes an inter partes review,
`
`the Director, in his or her discretion, may join as a party to that inter partes review
`
`any person who properly files a petition under section 311.” Because LG is already
`
`a party in IPR2015-00321, however, LG’s joinder request is fundamentally flawed:
`
`a “person cannot be joined as a party to a proceeding in which it is already a
`
`party.” See Skyhawke Tech., LLC, IPR2014-01485, Paper 13, at 3. ATI
`
`acknowledges that there has been disagreement between Board panels regarding
`
`this issue and statutory construction, but ATI submits that granting LG’s Motion
`
`
`
`
`- 14 -
`
`
`
`would require the Board to exceed the statutory authority granted to the Board for
`
`the purpose of joinder. See Samsung v. Affinity, Paper 12, at 4. Accordingly, the
`
`1PR2015-01620
`
`Board should deny LG’s Motion.
`
`IV. Conclusion
`
`LG fails to meet its burden demonstrating that the joinder is appropriate. LG
`
`is not entitled to a "second bite of the apple." LG has not provided any justification
`
`for getting a "second bite at the apple." Nor has LG provided any explanation as to
`
`why it could not have presented the art and arguments in the earlier proceeding that
`
`it now makes in its Second Petition. Further, contrary to LG’s self-serving
`
`reasoning, joinder will indeed prejudice ATI. Thus, for at least these reasons
`
`discussed above, ATI respectfully requests the Board to deny LG’s Motion for
`
`joinder of 1PR2015-01620 to 1PR2015-00321.
`
`Respectfully submitted,
`STERNE, KSSLER, GOLDSTEIN & Fox P.L.L.C.
`
`Michael B. ay (Registration No. 33,997)
`Lestin L. Kenton Jr. (Registration No. 72,314)
`Michael D. Specht (Registration No. 54,463)
`Attorneys for Patent Owner
`
`Date: ____________
`1100 New York Avenue, N. W.
`Washington, D.C. 20005
`(202) 371-2600
`
`- 15 -
`
`
`
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
`
`OPPOSITION TO MOTION FOR JOINDER was served electronically via e-
`
`mail on August 24, 2015, in their entirety on the following:
`
`Robert G. Pluta (Lead Counsel)
`Amanda K. Streff (Backup Counsel)
`MAYER BROWN, LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`rpluta@mayerbrown.com
`astreff@mayerbrown.com
`AMDIPRrnayerbrown.com
`
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`0
`
`Mic ael B. Ray (Registration No. 33,997)
`Lestin L. Kenton Jr. (Registration No. 72,314)
`Michael D. Specht (Registration No. 54,463)
`
`Attorneys for Patent Owner
`
`Date: 19/zv/(5
`
`1100 New York Avenue, N. W.
`Washington, D.C.20005
`(202) 371-2600
`
`-1-
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