Paper No. 12
`Filed: June 15, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`HTC CORPORATION, HTC AMERICA, INC.,
`and LG ELECTRONICS, INC.
`Petitioners,
`
`v.
`
` PARTHENON UNIFIED MEMORY ARCHITECTURE LLC
`Patent Owner.
`
`__________________
`
`Case IPR2016-00847
`U.S. Patent No. 5,812,789
`__________________
`
`
`
`PETITIONERS’ SECOND MOTION FOR JOINDER
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`
`
`
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`
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`Filed: June 15, 2016
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`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`HTC CORPORATION, HTC AMERICA, INC.,
`and LG ELECTRONICS, INC.
`Petitioners,
`
`v.
`
` PARTHENON UNIFIED MEMORY ARCHITECTURE LLC
`Patent Owner.
`
`__________________
`
`Case IPR2016-00847
`U.S. Patent No. 5,812,789
`__________________
`
`
`
`PETITIONERS’ SECOND MOTION FOR JOINDER
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`IPR2016-00847
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`Petitioners’ Motion for Joinder
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`TABLE OF CONTENTS
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`I.
`Introduction ........................................................................................................ 1
`II. Background and Related Proceedings ................................................................ 2
`III. Discussion .......................................................................................................... 2
`A. Reasons Why Joinder is Appropriate ............................................................ 3
`1. Substantively Identical Petitions ........................................................... 4
`2. Consolidated Filings and Discovery ..................................................... 4
`B. No New Grounds of Unpatentability ............................................................ 5
`C. No Impact on IPR Trial Schedule ................................................................. 5
`D. Briefing and Discovery Will Be Simplified.................................................. 6
`E. No Prejudice to PUMA if Proceedings Are Joined ...................................... 6
`IV. Conclusion .......................................................................................................... 6
`
`i
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`IPR2016-00847
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`I.
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`Introduction
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`
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`Petitioners’ Motion for Joinder
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`Samsung Electronics Co. Ltd. and Samsung Electronics America, Inc. filed a
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`petition for inter partes review of U.S. Patent No. 5,812,789 (“the 789 patent”), in
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`IPR2015-01944 (the “Samsung 789 IPR”), which was instituted on March 30,
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`2016. On April 7, 2016, HTC Corporation, HTC America, Inc., and LG
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`Electronics, Inc. (“Petitioners”) filed a petition for inter partes review of the 789
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`patent, IPR2016-00847 (the “HTC+LG 789 IPR”). On April 20, 2016, Apple Inc.
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`(“Apple”) also filed its own petition for inter partes review of the 789 patent,
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`IPR2016-00923 (the “Apple 789 IPR”). Both Petitioners and Apple sought joinder
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`to the Samsung 789 IPR, presented unpatentability grounds that are substantively
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`identical to the grounds instituted in the Samsung 789 IPR, and relied on the same
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`evidence and the same expert testimony as Samsung. On May 25, 2016, the Board
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`terminated the Samsung 789 IPR pursuant to a settlement agreement. On June 8,
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`2016, the Board issued an order in this case (Paper 11) authorizing Petitioners to
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`file a second motion for joinder, this time to the Apple 789 IPR.
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`Petitioners hereby move under 35 U.S.C. § 315(c) to join the pending
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`HTC+LG 789 IPR to the Apple 789 IPR if and when it is instituted. Counsel for
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`Petitioners have conferred with counsel for Apple, and Apple does not oppose
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`Petitioners’ motion. Patent Owner has previously indicated that it does plan on
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`opposing Petitioners’ motion. Ex. 1041 at 15:3-5.
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`1
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`IPR2016-00847
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`Petitioners’ Motion for Joinder
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`II. Background and Related Proceedings
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`The HTC+LG 789 IPR and Apple 789 IPR relate to a patent being asserted
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`by Parthenon Unified Memory Architecture LLC (“PUMA”) against Petitioners in
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`the United States District Court for the Eastern District of Texas. See Parthenon
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`Unified Memory Architecture LLC v. HTC Corporation and HTC America Inc.,
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`Case No. 2:14-cv-00690 (E.D.Tx. 2014) (lead case). The complaint in that case
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`was filed on June 12, 2014 alleging infringement of nine patents. See id. A later
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`complaint was filed against Apple by PUMA, alleging infringement of some of the
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`same patents. See Parthenon Unified Memory Architecture LLC v. Apple Inc.,
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`Case No. 2:15-cv-00621 (E.D.Tx. 2015). Apple timely filed inter partes review
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`petitions relating to several of the Patents-in-Suit, including the Apple 789 IPR
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`referenced above. The Apple 789 IPR has not yet been instituted, but is
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`substantively identical to the instituted Samsung 789 IPR. Samsung Electronics
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`Co., LTD et al v. Parthenon Unified Memory Architecture LLC, Case IPR2015-
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`01944, Paper 7 (PTAB March 30, 2016).
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`III. Discussion
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`Petitioners respectfully request that the Board exercise its discretion to grant
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`joinder of the HTC+LG 789 IPR with the Apple 789 IPR if and when instituted,
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`pursuant to 35 U.S.C. § 315(c), 37 C.F.R. § 42.22, and 37 C.F.R. § 42.122(b). As
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`noted above, the HTC+LG 789 IPR is substantively identical to the Apple 789 IPR.
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`2
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`IPR2016-00847
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`Petitioners’ Motion for Joinder
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`The HTC+LG 789 IPR challenges the same claims on the same grounds, includes
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`the same claim constructions and the same arguments, relies on the same exhibits,
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`and uses the same expert and the same expert declaration. Petitioners therefore
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`seek (1) a determination that the HTC+LG 789 IPR warrants institution on the
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`same grounds on which the Board may institute trial in the Apple 789 IPR; and (2)
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`joinder of the instituted HTC+LG 789 IPR into the Apple 789 IPR if and when
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`instituted. That would result in Petitioners joining the Apple 789 IPR without any
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`change to the scope or schedule. In support of this motion, Petitioners propose
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`consolidated filings and other procedural accommodations designed to streamline
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`the proceedings.
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`A. Reasons Why Joinder is Appropriate
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`Joinder is appropriate because it is the most expedient way to secure the just,
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`speedy and inexpensive resolution of the related proceedings. See 35 U.S.C. §
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`316(b); 37 C.F.R. § 42.1(b). The HTC+LG 789 IPR is substantively identical to the
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`corresponding Apple 789 IPR, and thus would avoid multiplication of issues
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`before the Board. Given the duplicative nature of these petitions, joinder of the
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`related proceedings is appropriate. Further, Petitioners agree to consolidated
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`filings and discovery.
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`3
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`IPR2016-00847
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`Petitioners’ Motion for Joinder
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`1.
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`Substantively Identical Petitions
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`Petitioners represent that the HTC+LG 789 IPR presents identical issues to
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`the Apple 789 IPR in all substantive respects. They include identical grounds,
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`analysis, and exhibits, and rely upon the same expert declarant and declaration.
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`Accordingly, maintaining the HTC+LG 789 IPR proceedings separate from those
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`of Apple would entail needless duplication of effort.
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`2.
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`Consolidated Filings and Discovery
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`Because the grounds of unpatentability in the HTC+LG 789 IPR and Apple
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`789 IPR are the same, the case is amenable to consolidated filings. Petitioners
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`agree to consolidated filings for all substantive papers (e.g., Reply to the Patent
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`Owner’s Response) and to work with counsel for Apple to incorporate Petitioners’
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`positions into Apple’s efforts, so long as Apple is a party to the joined proceedings.
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`Specifically, Petitioners agree to work with Apple to incorporate Petitioners’
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`positions with those of Apple in consolidated filings, subject to the ordinary page
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`limits for one party, and agree not to make arguments separate from those
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`advanced in the consolidated filings. This agreement thus avoids lengthy and
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`duplicative briefing.
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`Consolidated discovery is also appropriate given that Petitioners and Apple
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`are using the same expert declarant who has submitted an identical declaration in
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`the two proceedings. Petitioners therefore agree that Apple will be responsible for
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`4
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`IPR2016-00847
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`Petitioners’ Motion for Joinder
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`conducting cross and re-direct examination of witnesses and that no additional
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`depositions would be needed, if joinder is granted, and that it will work with Apple
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`prior to any deposition to incorporate Petitioners’ positions into Apple’s
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`questioning. Petitioners further agree that depositions should take place in the
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`normal time allotted with counsel for Apple responsible for examination and
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`defense of witnesses, albeit with attendance by Petitioners’ counsel.
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`Petitioners further agree to work with Apple prior to any hearing to
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`incorporate Petitioners’ positions into Apple’s presentations, with counsel for
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`Apple responsible for making the presentation at the hearing, again with
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`attendance by Petitioners’ counsel at any such hearing. These procedures would
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`remove or minimize any complication, duplication or delay caused by joinder.
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`B. No New Grounds of Unpatentability
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`The HTC+LG 789 IPR raises no new grounds of unpatentability from those
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`of the Apple 789 IPR because the corresponding petitions are substantively
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`identical.
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`C. No Impact on IPR Trial Schedule
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`The trial schedule for the Apple IPRs would not need to be delayed to effect
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`joinder. Because Petitioners raise identical grounds based on the same evidence
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`and the same expert declaration, Petitioners can join Apple’s proceeding without
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`any change to the trial schedule. The joint proceeding would allow the Board and
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`5
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`IPR2016-00847
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`Petitioners’ Motion for Joinder
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`the parties to focus on the merits in one consolidated proceeding in a timely
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`manner.
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`D. Briefing and Discovery Will Be Simplified
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`Joinder will simplify briefing and discovery because Petitioners seek an
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`order similar to that issued in The Gillette Company v. Zond, LLC, IPR2014-01012
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`(PTAB October 23, 2014) (Paper 13). Petitioners and Apple will engage in
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`consolidated filings and discovery, which will simplify the briefing and discovery
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`process. Petitioners will assume an “understudy” role, and only assume an active
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`role in the event that Apple settles with Patent Owner.
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`E. No Prejudice to PUMA if Proceedings Are Joined
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`PUMA will suffer no prejudice if the proceedings are joined. In fact, joinder
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`will decrease the number of papers the parties must file, reduce the time and
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`expense for depositions and other discovery required in separate proceedings, and
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`creates case management efficiencies for the Board and parties.
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`IV. Conclusion
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`For the foregoing reasons, Petitioners respectfully request that the Board (1)
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`determine that institution of trial is warranted on the same grounds on which the
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`Board may institute trial in the Apple 789 IPR (IPR2016-00923); and (2) join the
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`present proceeding into IPR2016-00923.
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`6
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`IPR2016-00847
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`
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`Petitioners’ Motion for Joinder
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`Dated: June 15, 2016
`
`/Rajeev Gupta/
`Rajeev Gupta
`Registration No. 55,873
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, L.L.P.
`901 New York Avenue, N.W.
`Washington, D.C. 20001-4413
`Counsel for Petitioner
`LG Electronics, Inc.
`
`Respectfully submitted,
`
`/Joseph A. Micallef/
`Joseph A. Micallef
`Registration No. 39,772
`SIDLEY AUSTIN LLP
`1501 K Street NW
`Washington, DC 20005
`Counsel for Petitioners HTC Corpora-
`tion and HTC America, Inc.
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`7
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`IPR2016-00847
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`
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`Petitioners’ Motion for Joinder
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`CERTIFICATE OF SERVICE
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`The undersigned certifies service under 37 C.F.R. §§ 42.6(e) and 42.105 by
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`electronic mail of a true and correct copy of this Motion on June 15, 2016, upon
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`counsel for the Patent Owner at the addresses below:
`
`Masood Anjom, manjom@azalaw.com
`Amir Alavi, aalavi@azalaw.com
`Scott Clark, sclark@azalaw.com
`Michael McBride, mmcbride@azalaw.com
`
`
`
`Dated: June 15, 2016
`
`/Rajeev Gupta/
`Rajeev Gupta
`Registration No. 55,873
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, L.L.P.
`901 New York Avenue, N.W.
`Washington, D.C. 20001-4413
`Counsel for Petitioner
`LG Electronics, Inc.
`
`Respectfully submitted,
`
`/Joseph A. Micallef/
`Joseph A. Micallef
`Registration No. 39,772
`SIDLEY AUSTIN LLP
`1501 K Street NW
`Washington, DC 20005
`Counsel for Petitioners HTC Corpora-
`tion and HTC America, Inc.
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