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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`LG ELECTRONICS, INC.
`Petitioner,
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`v.
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`FASTVDO LLC
`Patent Owner.
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`_______________
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`Case IPR2017-00683
`Patent 5,850,482
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`_______________
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S REQUEST
`TO JOIN THE CURRENT PROCEEDING WITH IPR2016-01203
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`Case No. IPR2017-00683
`Patent No. 5,850,482
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`Because Petitioner would otherwise be statutorily time-barred from filing a
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`petition for inter partes review of U.S. Patent No. 5,850,482, Petitioner asks the
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`Board to join the current proceeding with IPR2016-01203 pursuant to 35 U.S.C. §
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`315(c) and 37 C.F.R. § 42.122(b). However, while Petitioner proposes to take an
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`“understudy role,” the actual concessions proposed by Petitioner’s joinder request
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`contradict the “understudy” characterization and permit Petitioner to take a much
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`more active role in the proceedings. Additionally, any prejudice that inures to
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`Petitioner if the Board denies its joinder request is a result of Petitioner’s decision
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`not to file its petition within the statutorily authorized time. Accordingly, Patent
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`Owner FastVDO LLC opposes Petitioner’s request for joinder of the current
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`proceeding with IPR2016-01203.
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`I.
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`Petitioner’s Proposed Concessions for Joinder Unfairly Complicate
`the Proceedings for Patent Owner
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`As non-binding support for its motion to join this proceeding with IPR2016-
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`01203, Petitioner cites to Nintendo of America, Inc. and Nintendo Co., Ltd. v.
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`Babbage Holdings, LLC, IPR2015-00568, in which petitioner Nintendo
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`represented that it would take an “understudy” role. Paper 4 at 3. While Petitioner
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`LG Electronics Inc. (“LGE”) also offers to take an “understudy” role, the
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`concessions proposed here give Petitioner a much more substantial role in the
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`1
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`Case No. IPR2017-00683
`Patent No. 5,850,482
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`proceeding (see Paper 4 at 8, ¶a.) and unfairly prejudice Patent Owner. One
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`concession among those proposed by Petitioner is the following:
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`[Petitioner LG Electronics, Inc.] 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;
`See Paper 4 at 2. This term does not relegate Petitioner to an “understudy” role in
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`this proceeding but rather gives Petitioner the benefit of Apple’s and Petitioner’s
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`consolidated filing plus Petitioner’s own substantive submission of up to five pages
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`into the record. Further, in the contradictory statement that follows this proposed
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`concession, Petitioner asserts that allowing it to file its own five-page brief on any
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`issue, above and beyond the consolidated filing, would “greatly simplify briefing.”
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`Id. at 3. To the contrary, Petitioner’s proposed concession greatly complicates
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`briefing and increases Patent Owner’s burden to untangle Petitioner’s position as
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`presented in the two separate filings.
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`
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`Other Board decisions have implemented more restrictive limitations when
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`joining proceedings. For example, in Torrent Pharmaceuticals Ltd. v. UCB
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`Pharma GMBH, IPR2016-01636 (PTAB Dec. 7, 2016) (Paper 10), the Board
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`Case No. IPR2017-00683
`Patent No. 5,850,482
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`accepted the following concessions from the moving petitioner seeking joinder
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`with an earlier-filed case:
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`In its Motion for Joinder, Petitioner asserts that it “will
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`maintain a secondary, ‘understudy’ role in the joined
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`proceeding.” Mot. 7. In that regard, Petitioner represents
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`that
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`it will “coordinate with Mylan
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`to provide
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`consolidated filings within the page limits and will not
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`submit any separate filings unless and until Mylan settles
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`with [Patent Owner] or the Mylan IPR is otherwise
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`terminated.” Id. at 8. Petitioner also represents that it will
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`not “seek additional
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`time for depositions or oral
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`argument.” Id.
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`Id. at 5. Here, Petitioner LGE offers to coordinate with Apple, and even
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`raises the risk of Apple’s settlement as the reason that Petitioner filed its Petition
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`and motion. Paper 4 at 9 (“LGE is filing this petition and joinder Request to
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`ensure that the trial is completed in the event that the current petitioners in the
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`‘1203 IPR reach settlement with the Patent Owner.”). But Petitioner does not
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`condition its right to submit its own filing if (and only if) Apple settles with Patent
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`Owner or is otherwise terminated. Petitioner also does not condition its own filing
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`in the event that it disagrees with a position taken by Apple in IPR2016-01203, or
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`Patent No. 5,850,482
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`if its filing raises an issue unique to Petitioner. The condition for Petitioner’s own
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`five-page submission on any issue in the proceeding is satisfied if Petitioner in its
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`own discretion “needs to preserve a position for the record.” Paper 4 at 2.
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`In Torrent Pharmaceuticals, even under the more restrictive concessions
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`proposed by the movant seeking joinder, the Board ordered the movant to “seek
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`authorization from the Board to file a separate paper,” and only permitted such a
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`request where the “filing involves an issue unique to Petitioner or states a point of
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`disagreement related to the consolidated filing.” Torrent Pharmaceuticals Ltd. v.
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`UCB Pharma GMBH, IPR2016-01636, slip op. at 5-6 (PTAB Dec. 7, 2016) (Paper
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`10); see also Amerigen Pharmaceuticals Ltd. v. UCB Pharma GMBH, IPR2016-
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`01665, slip op. at 6 (PTAB Dec. 7, 2016) (Paper 8). Here, Petitioner LGE does not
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`seek to limit itself so, and does not propose to alleviate any unfair prejudice to
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`Patent Owner in having to address both the consolidated petitioner submission and
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`LGE’s separate submission. For example, Petitioner LGE’s concessions do not
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`preclude Petitioner LGE from using its own expert in support of any future filings.
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`This would have the effect of duplicating Patent Owner’s cross-examination
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`burden, and would be particularly prejudicial to Patent Owner during the shortened
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`period available for cross-examination of any reply declarant.
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`Further distinguishing itself from Torrent Pharmaceuticals, Petitioner LGE
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`also does not restrict its right to seek additional time for depositions or oral
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`Patent No. 5,850,482
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`argument.1 The Board in Torrent Pharmaceuticals expressly ordered that “Patent
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`Owner shall not be required to provide any additional discovery or deposition time
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`as a result of joinder.” Id. at 6.
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`Thus, while Petitioner suggests that it would be taking an understudy role in
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`IPR2016-01203, its proposed concessions fall short of that characterization and
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`instead only serve to complicate the joined proceedings to the detriment of Patent
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`Owner.
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`
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`II.
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`Petitioner is Not Prejudiced By Its Own Unexplained Delay in Filing
`Its Petition
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`The joinder request also asserts that denial would result in prejudice to
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`Petitioner LGE. See Paper 4 at 3. But prejudice to Petitioner LGE should not be
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`considered in the Board’s ruling. Petitioner provides no reason to explain its
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`decision not to file its petition for inter partes review within the statutory time
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`permitted under 35 U.S.C. § 315(b). As a result, any prejudice that would inure to
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`Petitioner from a denial of its joinder request is caused by Petitioner’s own
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`unexplained failure to file its petition for inter partes review within the statutory
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`time permitted under 35 U.S.C. § 315(b). See Paper 4 at 4, ¶1.
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`1 Petitioner concedes that “[n]o additional expert discovery will be required if
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`joinder is allowed” but this concession does not expressly limit Petitioner’s time
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`for cross-examination of Patent Owner’s witness(es).
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`5
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`Case No. IPR2017-00683
`Patent No. 5,850,482
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`III. Conclusion
`For the foregoing reasons, Patent Owner respectfully requests that the Board
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`deny Petitioner’s request for joinder and dismiss its Petition for Inter Partes
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`Review of the ‘482 patent without institution. In the event that the Board grants
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`Petitioner’s request for joinder, Petitioner should be relegated to a true
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`“understudy” role in IPR2016-01203, should be bound to modifications to the
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`Scheduling Order already of record in IPR2016-01203, and should be bound by
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`any Board Order issuing from Patent Owner’s Request for Rehearing filed on
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`December 30, 2016 in IPR2016-01203.
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`Respectfully submitted,
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`By: /s/ Wayne M. Helge
`Wayne M. Helge, Reg. No. 56,905
`whelge@dbjg.com
`Walter D. Davis, Reg. No. 45,137
`wdavis@dbjg.com
`Davidson Berquist Jackson &
`Gowdey, LLP
`8300 Greensboro Dr., Ste 500
`McLean, VA 22102
`Telephone: (571)765-7700
`Facsimile: (571)765-7200
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`Counsel for Patent Owner
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`6
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`Dated: February 13, 2017
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`Case No. IPR2017-00683
`Patent No. 5,850,482
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`CERTIFICATE OF SERVICE
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`I hereby certify that on February 13, 2017, a true and correct copy of the
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`
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`foregoing Patent Owner’s Opposition to Petitioner’s Request to Join the Current
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`Proceeding with IPR2016-01203 was served via email, by consent, to Petitioner by
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`serving the correspondence email addresses of record as follows:
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`
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`David N. Makous (Reg. No. 29,559)
`Jonathan Kang (Reg. No. 38,199 )
`LeeHongDegermanKangWaimey
`660 S. Figueroa St., Suite 2300
`Los Angeles, California 90017-3543
`Email: patent@lhlaw.com
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`By: /s/ Wayne M. Helge
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`Registration No. 56,905
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`Counsel for Patent Owner
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`7
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