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