`571-272-7822
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`
`Paper 12
`Entered: June 9, 2017
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`FASTVDO LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00683
`Patent 5,850,482
`____________
`
`
`Before KARL D. EASTHOM, JEFFREY S. SMITH, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`DECISION
`Granting Joinder; Terminating Inter Partes Proceeding
`37 C.F.R. §§ 42.108, 42.122
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`
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`IPR2017-00683
`Patent 5,850,482
`
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`I. INTRODUCTION
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`Petitioner LG Electronics, Inc. (“LGE”) filed a Petition for inter
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`partes review of claims 1–3, 5–14, 16, 17, 22–26, 28, and 29 of U.S. Patent
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`No. 5,850,482 (Ex. 1001, “the ’482 patent”). Paper 2 (“Petition”).
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`Petitioner also filed a Motion for joinder with Apple, Inc. v. FastVDO LLC,
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`IPR2016-01203. Paper 4 (“Motion”). Patent Owner filed an Opposition to
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`the Motion for joinder. Paper 10 (“Opposition”). Petitioner filed a Reply to
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`the Opposition. Paper 11 (“Reply”).
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`Upon consideration of the Petition, Motion, Opposition, and Reply,
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`we grant the Motion for joinder.
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`II. JOINDER
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`A party may be joined to an inter partes review, subject to the
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`provisions of 35 U.S.C. § 315(c), which governs joinder of inter partes
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`review proceedings:
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`(c) JOINDER.—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 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the time for filing
`such a response, determines warrants the institution of an inter
`partes review under section 314.
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`As the moving party, LGE bears the burden of proving that it is
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`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
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`should (1) set forth the reasons joinder is appropriate; (2) identify any new
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`grounds of unpatentability asserted in the petition; and (3) explain what
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`impact (if any) joinder would have on the trial schedule for the existing
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`2
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`
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`IPR2017-00683
`Patent 5,850,482
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`review. Kyocera Corp. v. Softview LLC, Case IPR2013-00004, slip. op. at 4
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`(PTAB April 24, 2013) (Paper 15).
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`LGE filed its Motion on January 13, 2017. Paper 4. The Board
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`instituted inter partes review in IPR2016-01203 on December 16, 2017.
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`IPR2016-01203, Paper 14. Accordingly, the filing date of the Motion for
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`Joinder satisfies the joinder filing requirement, as set forth in 37 C.F.R.
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`§ 42.122. See id. (“Any request for joinder must be filed . . . no later than
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`one month after the institution date of any inter partes review for which
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`joinder is requested”). The Petition asserts the same grounds as those on
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`which the Board instituted review in IPR2016-01203. Compare Pet. 19–66
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`with IPR2016-01203 at 44 (Paper 14); see also Motion 1 (“LGE’s Petition in
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`all material respects presents the same grounds as the petition in [IPR2016-
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`01203] – no new arguments, no new claims and no new grounds of
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`unpatentability are added by LGE’s Petition.”)
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`
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`The Board instituted a trial in IPR2016-01203 on the following
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`grounds:
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`Reference(s)
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`Kato1
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`Basis
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`§ 103
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`Fiala,2 Fazel,3 and Fazel ’6224
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`§ 103
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`Challenged Claims
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`1–3, 5–14, 16, 17, 22–26,
`28, and 29
`1–3, 5–14, 16, 17, 22–26,
`28, and 29
`
`
`1 US 5,392,037, Feb. 21, 1995.
`2 Fiala et al., Data Compression with Finite Windows, Communications of
`the ACM, Vol. 32, No. 4, 490–505 (1989).
`3 Fazel et al., Application of Unequal Error Protection Codes on Combined
`Source-Channel Coding of Images, International Conference on
`Communications, Including SuperComm Technical Sessions (IEEE),
`Atlanta, Vol. 3, 898–903 (April 15–19, 1990).
`4 US 5,218,622, June 8, 1993.
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`3
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`IPR2017-00683
`Patent 5,850,482
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`IPR2016-01203, Paper 14 at 44.
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`In its Motion, LGE agreed to take an understudy role to Petitioner
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`Apple, Inc. (“Apple”), and agreed to adhere to the existing trial schedule in
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`IPR2016-01203. Motion 8. LGE also demonstrates sufficiently that joinder
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`will promote efficiency. See Motion 1–3.
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`In its Opposition, Patent Owner contends that the Motion (1) does not
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`limit Petitioner’s right to submit its own filing on the condition that Apple
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`settles with Patent Owner or is otherwise terminated; (2) does not require
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`Petitioner to seek authorization from the Board to file a separate paper, and
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`only where the filing involves an issue unique to Petitioner or states a point
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`of disagreement related to the consolidated filing; (3) does not preclude
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`Petitioner from using its own expert in support of future filings; and (4) does
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`not restrict Petitioner’s right to seek additional time for depositions or oral
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`argument. Opp. 2–5. In Reply, Petitioner states that it has no objection to
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`seeking permission of the Board before filing an alternative pleading.
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`Reply. Petitioner also states that it will submit to whatever procedures the
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`Board requires. Id.
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`Given the following: 1) the challenges in the instant Petition are
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`identical to the grounds instituted in IPR2016-01203; 2) joinder will not
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`impact the existing trial schedule in IPR2016-01203; and 3) joinder will
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`promote efficiency, we determine the Petition warrants institution on the
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`same grounds as those on which the Board instituted inter partes review in
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`IPR2016-01203 and join LGE to IPR2016-01203.
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`After considering Patent Owner’s Opposition and Petitioner’s Reply,
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`we limit Petitioner’s right to submit its own filing on the condition that
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`Apple settles with Patent Owner or is otherwise terminated; we require
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`4
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`IPR2017-00683
`Patent 5,850,482
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`Petitioner to seek authorization from the Board to file a separate paper, and
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`only where the filing involves an issue unique to Petitioner or states a point
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`of disagreement related to the consolidated filing; we preclude Petitioner
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`from using its own expert in support of future filings; we preclude Petitioner
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`from seeking additional time for depositions or oral argument; and we bind
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`Petitioner to the Scheduling Order already of record in IPR2016-01203.
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`LGE is bound by any discovery agreements, including any deposition
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`arrangements, between Patent Owner and Apple in IPR2016-01203, and
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`LGE shall not seek any discovery beyond that sought by Apple. Patent
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`Owner shall not be required to provide any additional discovery or
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`deposition time as a result of the joinder. Apple in the joined proceeding
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`shall designate attorney(s) to conduct the collective cross-examination of
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`any witness produced by Patent Owner and the collective redirect
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`examination of any other witness within the timeframes set forth in 37
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`C.F.R. § 42.53(c) or as otherwise agreed by Patent Owner and Apple. No
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`individual party will receive any additional cross-examination or redirect
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`examination time. Moreover, if an oral hearing is requested and scheduled,
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`Apple in the joined proceeding shall designate attorney(s) to present a
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`consolidated argument at the oral hearing.
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`The Board expects LGE, Apple, and Patent Owner to meet and confer
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`regarding any disputes between them and to contact the Board only if such
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`matters cannot be resolved.
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`Under these circumstances, it is likely that joining Petitioner as a party
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`to IPR2016-01203 will not unduly delay or detrimentally affect IPR2016-
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`01203. We exercise our discretion to join the instant proceeding to
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`IPR2016-01203. Accordingly, the Motion is granted.
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`5
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`IPR2017-00683
`Patent 5,850,482
`
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`III. ORDER
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`It is
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`ORDERED that LGE’s Motion for Joinder is granted;
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`FURTHER ORDERED that IPR2016-00683 is instituted and LGE is
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`joined with IPR2016-01203;
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`FURTHER ORDERED that the grounds on which IPR2016-01203
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`were instituted remain unchanged and no other grounds are included in the
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`joined proceeding;
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`FURTHER ORDERED that the Order (Paper 9) and Stipulated
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`Schedule (Paper 22) in IPR2016-01203 shall govern the trial schedule of the
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`joined proceeding;
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`FURTHER ORDERED that, throughout the joined proceeding, Apple
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`shall file all papers as a single, consolidated filing;
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`FURTHER ORDERED that LGE is bound by any discovery
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`agreements between Patent Owner and Apple in IPR2016-01203 and that
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`LGE shall not seek any discovery beyond that sought by Apple;
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`FURTHER ORDERED that Apple in the joined proceeding shall
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`designate attorney(s) to conduct collective cross-examination, redirect
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`examination, and any other discovery within the timeframes set forth by the
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`rules, including 37 C.F.R. § 42.53(c), or as the parties otherwise agree upon;
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`FURTHER ORDERED that Apple in the joined proceeding shall
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`designate attorney(s) to present argument at the oral hearing, if requested
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`and scheduled, in a consolidated argument;
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`FURTHER ORDERED that IPR2017-00683 is terminated under
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`37 C.F.R. § 42.72 and all further filings in the joined proceedings will be in
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`IPR2016-01203;
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`6
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`
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`IPR2017-00683
`Patent 5,850,482
`
`
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`FURTHER ORDERED that a copy of this Decision will be entered
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`into the record of IPR2016-01203; and
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`
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`FURTHER ORDERED that the case caption in IPR2016-01203 shall
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`be changed to reflect joinder of the instant proceeding in accordance with
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`the attached example.
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`7
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`8
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`IPR2017-00683
`Patent 5,850,482
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`
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`PETITIONER:
`
`David Makous
`dmakous@lhlaw.com
`
`
`
`DAVID L. FERRMAN
`MARTIN M. NOONEN
`dferman@mofo.com
`10684-FastVDO-IPR@mofo.com
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`
`
`PATENT OWNER:
`
`Neil Rubin
`
`nrubin@raklaw.com
`
`Wayne Helge
`whelge@dbjg.com
`
`Amir Naini
`anaini@raklaw.com
`
`Walter Davis
`wdavis@davidsonberquist.com
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`
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`IPR2017-00683
`Patent 5,850,482
`
`
`
`Example Case Caption for Joined Proceeding
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`APPLE, INC., and
`LG ELECTRONICS, INC.,
`Petitioners,
`
`
`v.
`
`
`
`FASTVDO LLC,
`Patent Owner.
`
`____________
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`
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`Case IPR2016-012035
`Patent 5,850,482
`____________
`
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`5 LG Electronics, Inc. filed a petition in (now terminated) IPR2017-00683
`and has been joined to the instant proceeding.
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`10
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`