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
`______________
`
`REPLY IN SUPPORT OF PETITIONER’S MOTION FOR JOINDER
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`LG ELECTRONICS, INC.
`Petitioner
`
`v.
`
`ATI TECHNOLOGIES ULC
`Patent Owner
`_______________
`
`Case: IPR2015-01620
`
`Patent 7,095,945
`______________
`
`REPLY IN SUPPORT OF PETITIONER’S MOTION FOR JOINDER
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`
`INTRODUCTION ..........................................................................................1
`ARGUMENT..................................................................................................2
`A.
`Joinder Will Result in a Just and Speedy Resolution of the ’945
`Patent ....................................................................................................2
`The Statute Permits Joinder Of Issues .................................................3
`B.
`ATI Will Not Be Prejudiced.................................................................4
`C.
`III. CONCLUSION...............................................................................................5
`
`-i-
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Ariosa Diagnostics v. Isis Innovation Ltd.,
`IPR2013-00250, Paper 25, at 2 (“Ariosa II”) .......................................................1
`
`Butamax Advanced Biofuels LLC. v. Gevo, Inc.,
`IPR2014-00581, Paper 8, at 2 (Oct. 14, 2014) .................................................2, 3
`
`Microsoft Corp. v. Proxyconn, Inc.,
`IPR2013-00109, Paper 15.....................................................................................4
`
`Oxford Nanopore Techs., Ltd. v University of Washington, et al.,
`IPR2015-00057, at 20...........................................................................................4
`
`Samsung Electronics Co. Ltd. et al. v. Affinity Labs of Texas, LLC,
`IPR2015-00820, Paper 12, at 2 (May 15, 2015)...................................................3
`
`Samsung v. Virginia,
`IPR2014-00557, Paper 10, (Kim, McNamara, Clements, J.).......................2, 3, 5
`
`Sony v. Yissum,
`IPR2013-00327, Paper 15, (Medley, Easthom, Arpin, J.)....................................2
`
`Target Corporation v. Destination Maternity Corporation,
`IPR2014-00508, Paper 28, at 13-15 .....................................................................3
`
`Toyota Motor Corp. v. American Vehicular Sciences LLC,
`IPR2015-00262, Paper 10, at 5 (Jan. 29, 2015)....................................................3
`
`Statutes
`
`35 U.S.C. §315(c) ..........................................................................................1, 2, 3, 4
`
`35 U.S.C. § 325(d) .....................................................................................................3
`
`Other Authorities
`
`37 C.F.R. § 42.23(a)...................................................................................................1
`
`ii
`
`
`
`I.
`
`INTRODUCTION
`
`Both parties acknowledge there is a split between Board panels regarding
`
`joinder of the same party to an instituted IPR. The case-by-case basis on which the
`
`Board evaluates joinder, however, weighs in LGE’s favor. ATI does not dispute
`
`that the current petition uses the same base reference as the IPR2015-00321
`
`Petition, nor does it dispute the current petition adds only two new references to
`
`support an obviousness analysis for one claim—Claim 21.
`
`Indeed, ATI’s
`
`opposition did not oppose any of LGE’s “Statement of Material Facts.” See Paper
`
`7. As such,
`
`those facts “stand as admitted.” See Ariosa Diagnostics v. Isis
`
`Innovation Ltd., IPR2013-00250, Paper 25, at 2 (“Ariosa II”); 37 C.F.R. §
`
`42.23(a). While claims 18 and 21 are different, the subject matter of those claims
`
`has substantial overlap. Moreover, ATI cannot show any real prejudice;
`
`its
`
`increased costs argument for responding to two new references and one claim is
`
`belied by ATI’s scorched earth response in another instituted IPR pending between
`
`the parties. For the additional reasons discussed below, Petitioner respectfully
`
`requests that the Board exercise its discretion under § 315(c) and grant Petitioner’s
`
`motion for joinder.
`
`1
`
`
`
`II.
`
`ARGUMENT
`
`A.
`
`Joinder Will Result in a Just and Speedy Resolution of the ’945
`Patent
`Joinder is discretionary and evaluated on a case-by-case basis.1
`
`In view of
`
`the admitted material facts in this case, the Board should grant Petitioner’s motion
`
`for joinder because it will result in a “minimal amount of work” for Patent Owner
`
`and the Petitions involve “the same patent and parties… substantially the same
`
`exhibits… [and] substantial overlap in the asserted references.” See Samsung v.
`
`Virginia, IPR2014-00557, Paper 10, (Kim, McNamara, Clements, J.), at 18; Sony
`
`v. Yissum, IPR2013-00327, Paper 15, (Medley, Easthom, Arpin, J.) at 5. As such,
`
`joinder will result in the just and speedy resolution of the ’945 Patent.
`
`Contrary to ATI’s assertion, there is no “Board precedent” on this issue.
`
`Indeed, both parties cite cases on opposite sides of the split regarding joinder of
`
`issues under § 315(c). As such, ATI’s case law presents only one side of the split
`
`and it is also distinguishable. For example, in Butamax Advanced Biofuels LLC. v.
`
`Gevo, Inc., IPR2014-00581, Paper 8, at 2 (Oct. 14, 2014), the Board did not rule on
`
`1 ATI cites no rules or precedent
`
`requiring petitioners to identify new
`
`circumstances or prohibiting a second petition on a patent following an institution
`
`decision.
`
`2
`
`
`
`the merits of the joinder motion but instead denied the joinder motion as moot. In
`
`that case, the Board denied institution under 35 U.S.C. § 325(d) because the
`
`petition presented substantially the same prior art and arguments already before the
`
`Board. Id. at 7-8. That is not the case here. Indeed, Petitioner demonstrated why
`
`§325(d) does not apply on pages 8-9 of its Petition. Additionally, Samsung
`
`Electronics Co. Ltd. et al. v. Affinity Labs of Texas, LLC, IPR2015-00820, Paper
`
`12, at 2 (May 15, 2015), is distinguishable because the Petitioner in Samsung
`
`challenged claims in a second petition which were all already subject to review
`
`based on institution of three prior petitions. Here, claim 21 is not the subject of an
`
`already pending IPR. As a third example, in Toyota Motor Corp. v. American
`
`Vehicular Sciences LLC, IPR2015-00262, Paper 10, at 5 (Jan. 29, 2015), joinder
`
`was denied because the proceeding to which joinder was sought was terminated as
`
`a result of settlement. Here, the proceeding to which joinder is sought is still
`
`pending. Thus, ATI cites distinguishable case law and simply highlights the split
`
`on whether § 315(c) applies to joinder of issues.
`
`B.
`
`The Statute Permits Joinder Of Issues
`
`Contrary to ATI’s assertion, and as other panels have found, the proper
`
`interpretation of 35 U.S.C. §315(c) permits joinder of a party to an IPR of which it
`
`is already a party. Target Corporation v. Destination Maternity Corporation,
`
`IPR2014-00508, Paper 28, at 13-15.
`
`3
`
`
`
`In Oxford Nanopore Techs., Ltd. v University of Washington, et al.,
`
`IPR2015-00057, at 20, the Board acknowledged cases where joinder has been
`
`denied for follow-on petitions by the same party. The Board also acknowledged
`
`that the Board has declined to deny petitions in similar circumstances and noted
`
`that
`
`the decision is discretionary. Id. at 21. Considering the totality of the
`
`circumstances, the Board in Oxford granted Petitioner’s joinder motion. Like
`
`Oxford, Petitioner’s petition also involves the same patent and overlapping prior
`
`art. The Board in Oxford also agreed that the statute permitted self joinder. Id. at
`
`22-24. Thus, other panels have found that § 315(c) permits joinder of issues.
`
`Additionally, contrary to ATI’s assertion, the Board has allowed joinder
`
`where the petition would otherwise be barred under 315(b) absent joinder. See,
`
`e.g., Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 15, at 4. In
`
`granting joinder, the Board explained that “[t]he same patents and parties are
`
`involved in both proceedings. There is an overlap in the cited prior art. There is no
`
`discernible prejudice to either party. Petitioner has been diligent and timely in
`
`filing the motion.” Id. For similar reasons, and based on the admitted material
`
`facts, Petitioner respectfully requests that the Board grant its joinder motion.
`
`C.
`
`ATI Will Not Be Prejudiced
`
`ATI’s argument that it will be prejudiced and that will incur increased costs
`
`should be rejected because the overlap in subject matter and prior art will result in
`
`4
`
`
`
`minimal additional work for ATI. See, e.g., Samsung v. Virginia, IPR2014-00557,
`
`Paper 10, at 18. ATI argues that it would have to review “new arguments for new
`
`references.” However, ATI would not be prejudiced because while there are two
`
`new references, the primary reference, Hatanaka, is already a reference in the
`
`instituted IPR. Thus, any additional resources needed to review two secondary
`
`references will be minimal in comparison to the work already being done for the
`
`primary reference, Hatanaka.
`
`ATI’s claim of increased costs is also belied by its scorched earth response
`
`in pending IPR2015-00325, involving five claims of U.S. Patent No. 7,742,053.
`
`There, ATI’s response to the Petition included four new declarations and over one
`
`hundred exhibits. Clearly cost is not a substantial burden for ATI to respond to two
`
`additional references directed at one claim with subject matter overlap with an
`
`already instituted claim.
`
`ATI’s complaints regarding a proposed accelerated schedule are also
`
`unwarranted. As discussed in Petitioner’s motion, other cases have found that the
`
`accelerated schedule provided the Patent Owner adequate time for review.
`
`III. CONCLUSION
`
`For the foregoing reasons, Petitioner respectfully requests that its Petition for
`
`Inter Partes Review of U.S. Patent No. 7,095,945 be instituted and that this
`
`proceeding be joined with IPR2015-00321.
`
`5
`
`
`
`Dated: September 24, 2015
`
`Respectfully submitted,
`
`/Robert G Pluta Reg No 50970/
`Robert G. Pluta
`Registration No. 50,970
`Amanda K. Streff
`Registration No. 65,224
`Mayer Brown LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`Telephone:
`312-701-8641
`Facsimile:
`312-701-7711
`rpluta@mayerbrown.com
`astreff@mayerbrown.com
`
`Jamie B. Beaber (permission to file
`motion for pro hac vice admission to be
`sought)
`Michael W. Maas (permission to file
`motion for pro hac vice admission to be
`sought)
`Mayer Brown LLP
`1999 K Street, N.W.
`Washington, DC 20006
`Telephone:
`202-263-3000
`Facsimile:
`202-263-3300
`jbeaber@mayerbrown.com
`mmaas@mayerbrown.com
`
`Counsel for LG Electronics, Inc.
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that, on this 24th day of September, 2015, a true
`
`and correct copy of the foregoing PETITIONER’S REPLY IN SUPPORT OF
`
`MOTION FOR JOINDER was served via electronic mail to the attorneys of record
`
`at the following addresses:
`
`Michael B. Ray,
`Reg. No. 33,997
`mray-PTAB@skgf.com
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue,
`N.W. Washington, D.C. 20005
`Tel.: (202) 772-8569
`Fax: (202) 371-2540
`
`Lestin Kenton,
`Reg. No. 72,314
`lkenton-PTAB@skgf.com
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue,
`N.W. Washington, D.C. 20005
`Tel.: (202) 772-8594
`Fax: (202) 371-2540
`
`Michael D. Specht,
`Reg. No. 54,463
`mspecht-PTAB@skgf.com
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue,
`N.W. Washington, D.C. 20005
`Tel.: (202) 772-8756
`Fax: (202) 371-2540
`
`
`
`Date: September 24, 2015
`
`By:
`
`/Robert G Pluta Reg No 50970/
`Robert G. Pluta
`Registration No. 50,970
`Mayer Brown LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`Telephone: 312-701-8641
`Facsimile: 312-701-7711
`
`Counsel for LG Electronics, Inc.
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