UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`LG Electronics, Inc.
`
`Petitioner,
`
`v.
`
`Papst Licensing GmbH & Co., KG,
`
`Patent Owner
`
`
`
`CASE: Unassigned Patent No. 8,504,746
`
`
`
`PETITIONER’S MOTION FOR JOINDER PURSUANT TO
`35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 and 42.122(b)
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`LG Electronics, Inc.
`
`Petitioner,
`
`v.
`
`Papst Licensing GmbH & Co., KG,
`
`Patent Owner
`
`
`
`CASE: Unassigned Patent No. 8,504,746
`
`
`
`PETITIONER’S MOTION FOR JOINDER PURSUANT TO
`35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 and 42.122(b)
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`STATEMENT OF PRECISE RELIEF REQUESTED ................................... 5
`II.
`BACKGROUND AND RELATED PROCEEDINGS ................................... 6
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 7
`A.
`Legal Standard ....................................................................................... 8
`B.
`Joinder Is Appropriate ........................................................................... 9
`1.
`LG’s Petition is Substantively Identical to the Canon Petition.
` ................................................................................................... 10
`Joinder Will Not Impact the Canon IPR Trial Schedule. ......... 11
`2.
`LG Agrees to Consolidated Filings and Discovery. ................. 13
`3.
`IV. PROPOSED ORDER .................................................................................... 14
`V.
`CONCLUSION .............................................................................................. 14
`
`
`
`
`2
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Canon Inc. et al. v. Papst Licensing GmbH & Co., KG,
`IPR2016-01211, Paper 11 (Dec. 15, 2016)................................................. 5, 6, 12
`
`Canon Inc. et al. v. Papst Licensing GmbH & Co., KG,
`IPR2016-01211, Paper 12 (Dec. 15, 2016)......................................................... 12
`
`Canon Pharmaceuticals Inc. v. Novartis AG, et al.,
`IPR2015- 00268, Paper 17 (April 10, 2015) ...................................................... 10
`
`Dell, Inc. v. Network-1 Security Solutions, Inc.,
`IPR2013-00385, Paper 17 (July 29, 2013) ....................................................... 8, 9
`
`Kyocera Corp. et al. v. Softview LLC,
`IPR2013-00004, Paper 15 (Apr. 24, 2013) ........................................................... 8
`
`Motorola Mobility LLC v. Softview LLC,
`IPR2013-00256, Paper 10 (June 20, 2013) ......................................................... 10
`
`In re Papst Licensing Digital Camera Patent Litigation,
`MDL 1880, Case No. 1-07-mc-00493 (D.D.C.) ................................................... 6
`
`Papst Licensing GmbH & Co. KG v. Apple Inc.,
`Case No. 6-15-cv-1095 (E.D. Tex.) ...................................................................... 7
`
`Papst Licensing GmbH & Co. KG v. LG Electronics, Inc. et al.,
`Case No. 6-15-cv-1099 (E.D. Tex.) ...................................................................... 7
`
`Sony Corp., et al. v. Memory Integrity, LLC,
`IPR2015-01353, Paper 11 (Oct. 15, 2015) ................................................... 10, 13
`
`Statutes
`
`35 U.S.C. § 315(c) ............................................................................................. 5, 7, 8
`
`35 U.S.C. § 316(a) ................................................................................................... 11
`
`35 U.S.C. § 316(b) ..................................................................................................... 9
`
`3
`
`
`
`Other Authorities
`
`37 C.F.R. § 42.1(b) .................................................................................................... 9
`
`37 C.F.R. § 42.22 ................................................................................................... 6, 7
`
`37 C.F.R. § 42.100(c) ............................................................................................... 11
`
`37 C.F.R. § 42.122(b) ............................................................................................ 6, 7
`
`157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) .................................................. 11
`
`
`
`4
`
`
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Petitioner LG Electronics, Inc. (“LG”) submits this Motion for Joinder
`
`concurrently with a Petition for inter partes review (“IPR”) of U.S. Patent No.
`
`8,504,746 (“Petition”) based on grounds identical to those presented in Canon Inc.
`
`et al. v. Papst Licensing GmbH & Co., KG, IPR2016-01211 (the “Canon IPR”).
`
`The Canon IPR was instituted on December 15, 2016. Canon IPR, Paper 11
`
`(Decision Granting Institution of Inter Partes Review) (Dec. 15, 2016), at 2, 21.
`
`Pursuant to 35 U.S.C. § 315(c), LG respectfully requests and moves that its
`
`Petition be instituted and joined with the Canon IPR, under the exact same trial
`
`schedule. The petitioners in the Canon IPR consent to LG’s request for joinder.
`
`Joinder is appropriate because: (a) LG’s Petition includes the same
`
`substance as the petition in the Canon IPR (“Canon Petition”); (b) joinder will have
`
`no impact on the existing schedule in the Canon IPR; and (c) joinder will promote
`
`the efficient resolution of issues, specifically whether U.S. Patent No. 8,504,746
`
`(“the ’746 patent”) is unpatentable over well-known prior art.
`
`Absent joinder, LG will be prejudiced. In view of the potential impact on
`
`pending litigation against LG brought by Patent Owner relative to the ’746 patent
`
`and other related patents, LG has a significant interest in the underlying
`
`patentability determination at issue in the Canon IPR. Joinder would protect LG’s
`
`interests without affecting the scheduling or complexity of the pending Canon IPR,
`
`5
`
`
`
`and without prejudice to the petitioners in the Canon IPR (“Canon Petitioners”) or
`
`to Patent Owner. In light of the fact that LG’s Petition raises the same grounds of
`
`unpatentability over the same prior art, and that the Canon Petitioners are willing
`
`to agree to LG’s joinder, joinder with the Canon IPR is appropriate.
`
`LG’s present motion for joinder is timely under 37 C.F.R. § 42.22 and 37
`
`C.F.R. § 42.122(b), because it is submitted within one month of December 15,
`
`2016, the date on which the Canon IPR was instituted. Canon IPR, Paper 11.
`
`II. BACKGROUND AND RELATED PROCEEDINGS
`On June 17, 2016, the Canon Petitioners filed a petition (the Canon Petition)
`
`for inter partes review of the ’746 patent. On December 15, 2016, the Board
`
`issued a Decision Instituting Inter Partes Review of the ’746 patent based on the
`
`Canon Petition. Canon IPR, Paper 11. LG’s Petition presents the same grounds of
`
`unpatentability, the same prior art, and the same expert evidence as the Canon
`
`Petition.
`
`The Canon Petitioners are defendants in a multi-district litigation pending
`
`before the U.S. District Court for the District of Columbia1 in which Patent Owner
`
`asserts infringement of the ’144 patent and related patents. The Canon Petitioners
`
`have filed thirteen (13) petitions for inter partes review of the ’144 patent and
`
`1 In re Papst Licensing Digital Camera Patent Litigation, MDL 1880, Case No. 1-
`
`07-mc-00493 (D.D.C.).
`
`6
`
`
`
`related patents (including the Canon Petition). Eight (8) of those petitions have
`
`been granted at least in-part and proceedings have been instituted.2
`
`Petitioner LG is a defendant in a different litigation pending before the U.S.
`
`District Court for the Eastern District of Texas.3 In that Texas litigation, Patent
`
`Owner again asserts infringement of the ’144 patent and related patents. LG has
`
`filed three petitions for inter partes review of patents involved in that litigation.4
`
`LG is also filing one additional petition and motion for joinder concurrently with
`
`the instant petition and motion for joinder.
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`LG respectfully requests that the Board exercise its discretion and grant
`
`joinder of the instant Petition with the Canon IPR pursuant to 35 U.S.C. § 315(c),
`
`37 C.F.R. § 42.22, and 37 C.F.R. § 42.122(b). In support of this Motion, LG
`
`2 The instituted IPRs filed by the Canon Petitioners are IPR2016-01199, IPR2016-
`
`01200, IPR2016-01211, IPR2016-01212, IPR2016-01213, IPR2016-01214,
`
`IPR2016-01216, and IPR2016-01225.
`
`3 Papst Licensing GmbH & Co. KG v. LG Electronics, Inc. et al., Case No. 6-15-
`
`cv-1099 (E.D. Tex.) (consolidated for discovery into Papst Licensing GmbH & Co.
`
`KG v. Apple Inc., Case No. 6-15-cv-1095 (E.D. Tex.)).
`
`4 The IPR petitions filed by LG are IPR2017-00415, IPR2017-00448, and
`
`IPR2017-00448.
`
`7
`
`
`
`proposes consolidated filings and other procedural accommodations designed to
`
`streamline the proceedings, as described further below.
`
`A. Legal Standard
`The Leahy-Smith America Invents Act permits joinder of IPR proceedings.
`
`The statutory provision governing joinder of IPR proceedings is 35 U.S.C.
`
`§ 315(c):
`
`(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.
`
`Motions for joinder should “(1) set forth the reasons why joinder is
`
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`
`petition; (3) explain what impact (if any) joinder would have on the trial schedule
`
`for the existing review; and (4) address specifically how briefing and discovery
`
`may be simplified.” Dell, Inc. v. Network-1 Security Solutions, Inc., IPR2013-
`
`00385, Paper 17 (July 29, 2013), at 4; Kyocera Corp. et al. v. Softview LLC,
`
`8
`
`
`
`IPR2013-00004, Paper 15 (Apr. 24, 2013). As part of its discretion, the Board
`
`should consider the impact of substantive and procedural issues on the
`
`proceedings, as well as other considerations, while being “mindful that patent trial
`
`regulations, including the rules for joinder, must be construed to secure the just,
`
`speedy, and inexpensive resolution of every proceeding.” Dell, Inc., IPR2013-
`
`00385, Paper 17, at 3. The Board may also consider “the policy preference for
`
`joining a party that does not present new issues that might complicate or delay an
`
`existing proceeding.” Id. at 10. Under this framework, for the reasons set forth in
`
`the Petition and the present motion, joinder of the present instant Petition with the
`
`Canon IPR is appropriate.
`
`Joinder Is Appropriate
`
`B.
`Joinder is appropriate in this case because it is the most expedient way to
`
`secure the just, speedy, and inexpensive resolution of the two related proceedings.
`
`See 35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b). The instant Petition presents the same
`
`grounds of unpatentability, the same arguments, and the same evidence presented
`
`in the Canon Petition. Given the duplicative nature of these petitions and LG’s
`
`significant interest in the underlying patentability determination at issue, joinder of
`
`the related proceedings is appropriate and conserves Board resources. Further, LG
`
`will agree to consolidated filings and discovery so that LG will be bound by the
`
`schedule set forth in the Canon IPR.
`
`9
`
`
`
`The Board has found joinder is appropriate where (1) the joinder petition is
`
`identical to the instituted petition, (2) the party joining the proceeding agrees to
`
`consolidated filings and discovery, (3) joinder will not affect the schedule in the
`
`pending IPR, and (4) joinder will streamline the proceedings and increase
`
`efficiency without prejudicing the parties. See, e.g., Sony Corp., et al. v. Memory
`
`Integrity, LLC, IPR2015-01353, Paper 11 (Oct. 15, 2015) (granting LG and Sony’s
`
`motion for joinder where joinder petition presented identical grounds and identical
`
`evidence to the already instituted petition and where Sony and LG agreed to
`
`“understudy” role with consolidated filings and discovery); Canon
`
`Pharmaceuticals Inc. v. Novartis AG, et al., IPR2015- 00268, Paper 17 (April 10,
`
`2015) (granting motion for joinder of substantially identical petition where
`
`petitioner agreed to consolidated filings and discovery and relied on the same
`
`expert declarations); Motorola Mobility LLC v. Softview LLC, IPR2013-00256,
`
`Paper 10 (June 20, 2013) (granting motion for joinder under similar
`
`circumstances). This Petition and Motion is no different.
`
`1.
`
`LG’s Petition is Substantively Identical to the Canon
`Petition.
`
`The instant Petition contains the same substance presented in the petition in
`
`the Canon IPR. LG’s Petition challenges the same patent claims, contains the
`
`same grounds of unpatentability, and is the same in all substantive aspects as the
`
`instituted Canon IPR.
`
`10
`
`
`
`LG’s Petition contains the same analysis and exhibits, and relies on the same
`
`expert opinion—that of Dr. Paul F. Reynolds. If joinder is granted, LG is prepared
`
`to rely solely on the testimony of Dr. Reynolds.
`
`Because the Board has already instituted trial in the Canon IPR, the
`
`substantively identical instant Petition and supporting exhibits will not require
`
`additional Board resources to determine that institution and joinder of the instant
`
`petition with the Canon IPR is appropriate. Indeed, in circumstances such as these,
`
`the PTO anticipated that joinder of proceedings would be granted as a matter of
`
`right. See 157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen.
`
`Kyl) (“The Office anticipates that joinder will be allowed as of right—if an IPR is
`
`instituted on the basis of a petition, for example, a party that files an identical
`
`petition will be joined to that proceeding, and thus allowed to file its own briefs
`
`and make its own arguments.”).
`
`Joinder Will Not Impact the Canon IPR Trial Schedule.
`
`2.
`Joinder will not impact the Board’s ability to complete its review in a timely
`
`manner. 35 U.S.C. § 316(a)(11) and 37 C.F.R. § 42.100(c) provide that IPR
`
`proceedings should be completed and the Board’s final decision issued within one
`
`year of institution of the review. The same provisions provide the Board with
`
`flexibility to extend the one-year period by up to six months for good cause, or in
`
`the case of joinder. See 35 U.S.C. § 316(a)(11); 37 C.F.R. § 42.100(c). In this case,
`
`11
`
`
`
`joinder should not affect the Board’s ability to issue its final determination within
`
`one year because LG does not raise any issues that are not already before the Board
`
`and the Canon IPR was instituted only one month ago. See Canon IPR, Paper 11.
`
`Further, LG agrees that the Scheduling Order issued in the Canon IPR will
`
`apply to the joined proceeding. See Canon IPR, Paper 12 (Scheduling Order) (Dec.
`
`15, 2016). The first deadline is the Initial Conference Call, which has not yet
`
`occurred and which deadline is “Upon Request” by the parties. Id. at 7. In the
`
`event that call occurs before LG is joined, LG agrees to be bound by any
`
`agreements or commitments made by the Canon Petitioners on that call.
`
`The next deadline in the Canon IPR is Patent Owner’s response to the
`
`petition and any motion to amend the petition, which is currently set for March 15,
`
`2017―two months from the date of this motion. Should the Board grant LG’s
`
`request for joinder, Patent Owner will have ample time to complete its submission
`
`by its deadline, particularly given that Patent Owner’s response would not require
`
`any analysis beyond that needed to respond to the Canon Petition. None of the
`
`other deadlines should need to be extended following joinder of LG’s Petition to
`
`the Canon IPR. In sum, no aspect of the trial schedule for the Canon IPR would
`
`need to be impacted to effect joinder. Rather, a joint proceeding would allow the
`
`Board and parties to focus on the merits in one consolidated proceeding without
`
`unnecessary duplication of effort, and in a timely manner.
`
`12
`
`
`
`LG Agrees to Consolidated Filings and Discovery.
`
`3.
`Because the grounds of unpatentability and the prior art relied on in the
`
`instant Petition and the Canon Petition are the same, the case is amenable to
`
`consolidated filings and discovery, which will simplify the briefing and discovery
`
`process.
`
`LG agrees to consolidated filings for all substantive papers in the
`
`proceedings (e.g., Reply to the Patent Owner’s Response, Opposition to Motion to
`
`Amend, Motion for Observation on Cross Examination Testimony of a Reply
`
`Witness, Motion to Exclude Evidence, Opposition to Motion to Exclude Evidence
`
`and Reply). Specifically, LG agrees to incorporate its filings with those of the
`
`Canon Petitioners into a consolidated filing in the Canon IPR, unless the filing
`
`involves an issue unique to LG or states a point of disagreement related to the
`
`consolidated filing. In such circumstances, LG proposes to make a separate filing
`
`of no more than five pages. See Sony Corp, IPR2015-01353, Paper 11, at 7-8
`
`(allowing five pages, without prior authorization from the Board, for filings
`
`involving an issue unique to joinder petitioners or stating a point of disagreement
`
`related to the consolidated filing).
`
`LG further agrees to take a subordinate “understudy” role in discovery. LG
`
`agrees to work with the Canon Petitioners to manage any depositions within an
`
`ordinary time limit and to allow the Canon Petitioners to take the lead in
`
`13
`
`
`
`designating an attorney to conduct the cross-examination of any given witness
`
`produced by Patent Owners, and the redirect of any given witness produced by LG
`
`and the Canon Petitioners within the ordinary time limits normally allotted by the
`
`rules for one party. LG also agrees not to seek any discovery beyond that sought by
`
`the Canon Petitioners. In short, as long as the Canon IPR remains pending
`
`following joinder, no additional discovery would be incurred due to the joinder of
`
`LG. LG would only assume the primary role in discovery matters if the Canon
`
`Petitioners cease to participate in the IPR or agree to LG assuming the primary
`
`role.
`
`IV. PROPOSED ORDER
`LG proposes a joinder order for consideration by the Board as follows:
`
` The instant Petition will be instituted and joined with the Canon IPR;
`
`and
`
` The scheduling order for the Canon IPR will apply to the joined
`
`proceeding.
`
`V. CONCLUSION
`For the foregoing reasons, LG respectfully requests that its Petition be
`
`instituted and the proceeding joined with Canon Inc. et al. v. Papst Licensing
`
`GmbH & Co., KG, IPR2016-01211. Although no additional fee is believed to be
`
`required for this Motion, the Commissioner is hereby authorized to charge any
`
`14
`
`
`
`additional fees which may be required for this Motion to Deposit Acct. No. 50-
`
`2428.
`
`Dated: January 13, 2017
`
`
`
`Respectfully submitted,
`
`
`
`By: / Herbert H. Finn /
`Herbert H. Finn (Reg. No. 38,139)
`Jonathan E. Giroux (Reg. No. 66,639)
`Greenberg Traurig, LLP
`77 W. Wacker Dr., Suite 3100
`Chicago, IL 60601
`Telephone: (312) 456-8400
`Fax: (312) 456-8435
`finnh@gtlaw.com
`Counsel for Petitioner
`
`15
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Motion for
`
`Joinder was served on January 13, 2017 via Courier and Priority Mail Express®
`
`delivery directed to the attorney of record for the patent at the following address:
`
`Anthony Meola, Jr.
`SCHMEISER, OLSEN & WATTS
`2500 Westchester Avenue, Suite 210
`Purchase, NY 10577
`
`Nicholas T. Peters
`FITCH EVEN TABIN & FLANNERY LLP
`120 South LaSalle
`Suite 1600
`Chicago, Illinois 60603
`ntpete@fitcheven.com
`
`Courtesy Copy to Papst’s Litigation Counsel
`
`John M. Desmarais
`jdesmarais@desmaraisllp.com
`Jonas R. McDavit
`jmcdavit@desmaraisllp.com
`Richard M. Cowell
`rcowell@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`
`Christopher V. Goodpastor
`cgoodpastor@dpehlaw.com
` Andrew G. DiNovo
`adinovo@dpehlaw.com
` Adam G. Price
`aprice@dpehlaw.com
`
`
`
`16
`
`
`
`Dated: January 13, 2017
`
`
`
`
`
`
`
`By: / Herbert H. Finn /
`Herbert H. Finn (Reg. No. 38,139)
`Jonathan E. Giroux (Reg. No. 66,639)
`Greenberg Traurig, LLP
`77 W. Wacker Dr., Suite 3100
`Chicago, IL 60601
`Telephone: (312) 456-8400
`Fax: (312) 456-8435
`finnh@gtlaw.com
`Counsel for Petitioner
`
`17
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
