UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`LG ELECTRONICS, INC.
`Petitioner
`v.
`FASTVDO LLC,
`Patent Owner
`
`Patent No. 5,850,482
`
`Inter Partes Review (IPR) No. _________
`
`
`PETITIONER’S REQUEST FOR JOINDER WITH IPR2016-01203
`UNDER 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.
`FASTVDO LLC,
`Patent Owner
`
`Patent No. 5,850,482
`
`Inter Partes Review (IPR) No. _________
`
`
`PETITIONER’S REQUEST FOR JOINDER WITH IPR2016-01203
`UNDER 35 U.S.C. 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`Statement of Relief Requested ........................................................................ 1
`I.
`Statement of Material Facts ............................................................................. 4
`II.
`III. Statement of Reasons for Requested Relief .................................................... 5
`
`A. Legal Standard ............................................................................................ 5
`
`B. LGE’s Request for Joinder is Timely ......................................................... 6
`
`C. Joinder is Appropriate ................................................................................. 6
`IV. CONCLUSION ................................................................................................ 9
`
`
`i
`
`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`PTAB Page(s)
`Dell Inc. v. Network-1 Security Solutions, Inc., IPR2013-00385, Paper No. 17
`(July 29, 2013) ........................................................................................................... 6
`Enzymotec Ltd. v. Neptune Techs & Bioresources, Inc., IPR2014-00556, Paper No.
`19 (July 9, 2014) ........................................................................................................ 6
`Nintendo of America, Inc. and Nintendo Co., Ltd. v. Babbage Holdings, LLC,
`IPR2015-00568 Paper No. 12 (March 18, 2015). ...................................................... 3
`
`FEDERAL STATUTES
`35 U.S.C. § 315(b) ..................................................................................................... 6
`35 U.S.C. § 315(c) ............................................................................................. 1, 5, 6
`35 U.S.C. § 316(a)(11) ............................................................................................... 8
`
`FEDERAL REGULATIONS
`37 C.F.R. § 42.100(c) ................................................................................................. 8
`37 C.F.R. § 42.122(a) ................................................................................................. 5
`37 C.F.R. § 42.122(b) ........................................................................................ 1, 4, 6
`
`
`ii
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`
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`
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`
`
`I. Statement of Relief Requested
`
`Petitioner LG Electronics, Inc. (“LGE”) respectfully submits this Request
`
`for Joinder together with its Petition for Inter Partes Review of U.S. Patent No.
`
`5,850,482 (“Petition”). Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b),
`
`LGE requests inter partes review and joinder with the recently granted IPR in
`
`Apple Inc. v FastVDO LLC Case IPR2016-01203 (the ‘1203 IPR) for the same
`
`patent in which trial was instituted on the ‘1203 IPR petition on December 16,
`
`2016.
`
`LGE’s Petition in all material respects presents the same grounds as the
`
`petition in the ‘1203 IPR – no new arguments, no new patent claims and no new
`
`grounds of unpatentability are added by LGE’s Petition. Furthermore LGE accepts
`
`all claim constructions made by the Board in the ‘1203 IPR.
`
`LGE’s Request for Joinder and accompanying Petition are being filed within
`
`one month of the decision instituting trial in the ‘1203 IPR, and are therefore
`
`timely.
`
`LGE is filing this petition and joinder Request to ensure that the trial is
`
`completed in the event that the current petitioner in the ‘1203 IPR reach settlement
`
`with the Patent Owner. Joinder is appropriate here because LGE’s Petition is
`
`narrowly drafted to challenge the same claims of USP 5,850,482 (the “’482
`
`Patent”) that were challenged in the ‘1203 IPR:
`
`1
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`
`
`
`
`
`
`1. Claims 1–3, 5–14, 16, 17, 22–26, 28, and 29 of the ’482 patent as
`
`unpatentable under 35 U.S.C. § 103 over Kato; and
`
`2. Claims 1–3, 5–14, 16, 17, 22–26, 28, and 29 of the ’482 patent as
`
`unpatentable under 35 U.S.C. § 103 over Fiala, Fazel, and Fazel ’622.
`
`Additionally, joinder will not adversely impact the trial schedule in the
`
`‘1203 IPR, as:
`
`a. LGE’s legal theories and claim charts are identical to the legal theories
`
`and claim charts in the ‘1203 IPR;
`
`b. LGE relies on the same expert declaration relied on by the existing
`
`petitioner in the ‘1203 IPR;
`
`c. No additional expert discovery will be required if joinder is allowed,
`
`simplifying discovery;
`
`d. LGE will adhere to all applicable deadlines set forth by the Scheduling
`
`Order currently in place in the ‘1203 IPR;
`
`e. LGE will coordinate with counsel for Apple in the ‘1203 IPR regarding
`
`the consolidation of all filings and will not submit any separate filings
`
`unless, after consultation with Apple, LGE needs to preserve a position
`
`for the record, in which case LGE would limit any additional filing to
`
`five (5) pages or less;
`
`2
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`
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`
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`f. This procedure and continued cooperation of counsel will greatly
`
`simplify briefing if the Board permits joinder;
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`g. LGE would be prejudiced if the Board denies the Request for joinder
`
`because of the possibility that the petitioner will reach a settlement and
`
`the patent owner can successfully move to terminate the proceedings
`
`prior to the issuance of a final determination; and
`
`h. Any additional costs incurred by the existing parties to the ‘1203 IPR
`
`will be minor, particularly as balanced against the prejudice to LGE from
`
`a denial of joinder.
`
`The circumstances here are very similar to that present in Nintendo of
`
`America, Inc. and Nintendo Co., Ltd. v. Babbage Holdings, LLC, IPR2015-00568,
`
`wherein Nintendo filed a Motion to join with another petitioner challenging the
`
`same patent, asserting the same ground on which the Board had just instituted an
`
`IPR. In that joinder motion Nintendo also represented that it would take an
`
`understudy role, unless and until all petitioners settled with the patent owner.
`
`Although the patent owner later settled with the primary petitioner, the
`
`Board allowed Nintendo to join, and instituted review. In evaluating the basis for
`
`the grant of the joinder, the Board found that:
`
`a.
`
`Nintendo’s Request was timely filed to satisfy the requirement that
`
`the request for joinder be filed no later than one month after the institution
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`3
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`
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`
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`date of the current proceeding (See 37 C.F.R. § 42.122(b));
`
`b.
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`The Board also noted that the new petition was essentially the same as
`
`the prior petition in grounds, prior art, expert testimony, and arguments
`
`presented, with the lone exception being Nintendo’s acceptance and
`
`adoption of the Board’s claim constructions already made in the proceeding.
`
`II. Statement of Material Facts
`
`1.
`
`The ‘482 Patent is presently being asserted in the patent infringement
`
`lawsuit FastVDO LLC v. LG Electronics, Inc. et al., Case No. 2:15-cv-
`
`000923 originally filed in June 2015, by the Patent Owner against the
`
`Petitioner in the United States District Court for the Eastern District of
`
`Texas, and transferred to the Southern District of California, Case No. 3:16-
`
`cv-00386, by order of February 11, 2016 where it is now pending (37 C.F.R.
`
`§ 42.8(b)(2)). On October 5, 2016 FastVDO LLC v. LG Electronics
`
`Mobilecomm U.S.A., Inc, Case 3:16-cv-02499-H-WVG was filed.
`
`2.
`
` On December 16, 2016 the Board granted Apple’s petition for review
`
`of the following claims for the following grounds: Claims 1–3, 5–14, 16, 17,
`
`22–26, 28, and 29 of the ’482 patent as unpatentable under 35 U.S.C. § 103
`
`over Kato; and Claims 1–3, 5–14, 16, 17, 22–26, 28, and 29 of the ’482
`
`patent as unpatentable under 35 U.S.C. § 103 over Fiala, Fazel, and Fazel
`
`4
`
`
`
`
`
`’622.
`
`
`
`3.
`
` On December 16, 2016 the Board also granted the petition for review
`
`of different claims on different grounds for the ‘482 patent in the related IPR
`
`matter of Microsoft Corporation, Microsoft Mobile Inc., Samsung
`
`Electronics America, Inc., and Samsung Electronics Co. Ltd., Petitioner, v.
`
`FastVDO LLC, Patent Owner, Case IPR2016-01179.
`
`
`
`4.
`
`On January 10, 2017 LGE requested from the Court to stay the
`
`pending US Court litigation FastVDO v. LG Electronics et al. case, based on
`
`the December 16, 2016 grants of these two IPRs challenging the ‘482 patent.
`
`5.
`
`Concurrently with this Request for Joinder, LGE is filing a Petition
`
`challenging all claims of the ‘482 Patent on the same grounds on which trial
`
`was instituted in the ‘1203 IPR, relying on the same legal theories and
`
`evidence.
`
`III. Statement of Reasons for Requested Relief
`
`A. Legal Standard
`
`The Leahy-Smith America Invents Act (AIA) permits joinder of like review
`
`proceedings, e.g. an inter partes review may be joined with another inter partes
`
`review. 37 C.F.R. § 42.122(a). The Board has discretion to join parties to an
`
`existing inter partes review. 35 U.S.C. § 315(c). In deciding whether to exercise its
`
`5
`
`
`
`
`
`
`
`discretion, the Board considers factors including: (1) the movant’s reasons why
`
`joinder is appropriate; (2) whether the new petition presents any new grounds of
`
`unpatentability; (3) what impact (if any) joinder would have on the trial schedule
`
`for the existing review; and (4) how briefing and discovery may be simplified.
`
`Dell Inc. v. Network-1 Security Solutions, Inc., IPR2013-00385, Paper No. 17 at 4
`
`(July 29, 2013).
`
`B. LGE’s Request for Joinder is Timely
`
`The instant Petition and this Request for Joinder are timely under 35 U.S.C.
`
`§ 315(c) and 37 C.F.R. § 42.122(b). While, as a general proposition, a petition for
`
`inter partes review may not be filed more than one year after the date on which a
`
`petitioner is served with a complaint alleging infringement of the patent-at-issue
`
`(35 U.S.C. § 315(b)), the one year period does not apply when a petition for inter
`
`partes review is accompanied by a Request for joinder filed within one month of
`
`institution of the inter partes review for which joinder is requested. Id.; 37 C.F.R.
`
`§ 42.122(b). This Request for Joinder and the accompanying Petition are timely,
`
`as they are submitted within one month of the institution of trial in the ‘1203 IPR
`
`on December 16, 2016.
`
`C. Joinder is Appropriate
`
`The PTAB has previously stated that it is “mindful of a policy preference for
`
`joining a party that does not present new issues that might complicate or delay an
`
`6
`
`
`
`
`
`
`
`existing proceeding.” Enzymotec Ltd. v. Neptune Techs & Bioresources, Inc.,
`
`IPR2014-00556, Paper No. 19 at 6 (July 9, 2014) (citing 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 inter partes review 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.”). LGE’s Petition challenges the same patent claim on the same ground
`
`on which trial in the ‘1203 IPR was instituted, and relies on the same legal theories
`and expert declaration relied on by the ‘1203 IPR petitioners. In support of its
`
`Petition LGE has submitted the same Declaration of Dr. Andrew Lippmann,
`
`previously submitted in support of the ‘1203 IPR petition, and relies on those
`
`portions of the Lippmann Declaration that support inter partes review.
`
`LGE is in communication with counsel for Apple, the ‘1203 IPR petitioner,
`
`who we understand will not oppose this Request for Joinder, and LGE will abide
`
`by the schedule of the parties, Apple and FastVDO, which are agreed to on all
`
`briefing and discovery. No new claims and no new grounds will be added to the
`
`proceedings as a result of the Board allowing joinder. Since it is redundant, it is
`
`believed that the Patent Owner should not need or even exercise any meaningful
`
`time commitment to prepare a Preliminary Patent Owner Response, if it chooses to
`
`file one. Because LGE’s Petition is drafted solely to address the claims and
`
`7
`
`
`
`
`
`
`
`grounds upon which the ‘1203 IPR trial has been instituted, joinder will result in
`
`no substantial additional cost to any party.
`
`Joinder will not alter the trial schedule currently in place in the ‘1203 IPR
`
`because both LGE and the existing ‘1203 IPR petitioner will address the same
`
`prior art using the same expert, resulting in no additional expert discovery.
`
`Moreover, LGE has agreed to adhere to all applicable deadlines set forth in the
`
`‘1203 IPR Scheduling Order and will coordinate with counsel for the ‘1203 IPR
`
`petitioner to consolidate filings. Unless and until the ‘1203 petitioner settles with
`
`the patent owner, LGE would:
`
`a.
`
`b.
`
`Take an understudy role;
`
`Not submit any separate filings unless after consultation with Apple
`
`LGE needs to preserve a position for the record, in which case LGE would
`
`limit any additional filing to five (5) pages or less;
`
`c.
`
`Accept the claim constructions;
`
`d. Make no challenges to any additional claims; and
`
`e.
`Raise no new grounds of unpatentability.
`Joinder should not unduly affect the Board’s ability to complete its review
`
`and issue its final determination within the statutory time limits under 35 U.S.C. §
`
`316(a)(11) and 37 C.F.R. § 42.100(c). Therefore, joinder will have no adverse
`
`impact on the ‘1203 IPR Scheduling Order and the timing of the Board’s
`
`8
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`
`
`
`
`
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`determinations. LGE is filing this petition and joinder Request to ensure that the
`
`trial is completed in the event that the current petitioners in the ‘1203 IPR reach
`
`settlement with the Patent Owner. Given that the Patent Owner has settled with
`
`other defendants, this is a significant concern. LGE would be prejudiced if the
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`Board denies the Request for joinder because LGE’s interests may not be
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`adequately represented in the ‘1203 IPR, in the event that Apple reaches a
`
`settlement and successfully moves to terminate the proceedings prior to the
`
`issuance of a final determination.
`
`IV. Conclusion
`
`For the foregoing reasons, LGE respectfully requests that the Board institute
`
`its Petition for Inter Partes Review of the ‘482 patent and permit joinder in the
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`‘1203 proceeding.
`
`Dated: January 13, 2017
`
` Respectfully submitted,
`
`/David N. Makous, Esq./
`David N. Makous
`Reg. No. 29,559
`
`9
`
`
`
`
`
`
`
`Certificate of Service (37 C.F.R. § 42.6(e)(4))
`I hereby certify that the attached PETITIONER’S REQUEST FOR
`JOINDER WITH IPR2016-01203 UNDER 35 U.S.C. 315(c) AND 37 C.F.R. §§
`42.22 AND 42.122(b) and supporting materials were served as of the below date
`by U.S. Express Mail, on the Patent Owner, FastVDO LLC at the correspondence
`address indicated for U.S. Patent No. 5,850,482:
`
`Guy R Gosnell, Esq. Bell Seltzer Park and Gibson Post Office Drawer
`34009 Charlotte, NC 28234
`
` I
`
` further certify that the attached PETITIONER’S REQUEST FOR
`JOINDER WITH IPR2016-01203 UNDER 35 U.S.C. 315(c) AND 37 C.F.R. §§
`42.22 AND 42.122(b) and supporting materials were also served as of the below
`date by email upon present counsel in IPR 2016-01203 and FastVDO LLC v. LG
`Electronics, Inc. et al., Case No. 3:16-cv-00386 (S.D. Cal.):
`
`- Counsel for FastVDO LLC in IPR 2016-01203: Wayne M. Helge, Walter
`D. Davis, Davidson, Berquist, Jackson & Gowdrey, LLP,
`whelge@dbjg.com, wdavis@dbjg.com
`- Counsel for Apple in IPR 2016-01203: David L. Fehrman, Martin M.
`Noonen, MORRISON & FOERSTER, LLP, dfehrman@mofo.com,
`moonnen@mofo.com
`- Counsel of record for Patent Owner FastVDO LLC in the pending case of
`FastVDO LLC v. LG Electronics Inc. et al., by email on Marc A. Fenster,
`Esq. (mfenster@raklaw.com) Reza Mirzaie, Esq. (rmirzaie@raklaw.com)
`Jeffrey Z.Y. Liao, Esq. (jliao@raklaw.com) Christian W. Conkle, Esq.
`(cconkle@raklaw.com) Russ August & Kabat 12424 Wilshire Boulevard,
`12th Floor Los Angeles, California 90025
`
`Dated: January 13, 2017
`
`
`
`
`
`By
`
`//David N. Makous//
`David N. Makous
`
`
`
`10
`
`
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