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. 9,189,437
`
`
`
`
`
`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. 9,189,437
`
`
`
`
`
`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 ........................ 8
`A.
`Legal Standard ....................................................................................... 8
`B.
`Joinder Is Appropriate ........................................................................... 9
`1.
`LG’s Petition is Substantively Identical to the Samsung
`Petition. ..................................................................................... 11
`Joinder Will Not Impact the Samsung IPR Trial Schedule. ..... 12
`2.
`LG Agrees to Consolidated Filings and Discovery. ................. 13
`3.
`IV. PROPOSED ORDER .................................................................................... 15
`V.
`CONCLUSION .............................................................................................. 15
`
`
`
`
`2
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Canon Pharmaceuticals Inc. v. Novartis AG, et al.,
`IPR2015- 00268 .................................................................................................. 10
`
`Dell, Inc. v. Network-1 Security Solutions, Inc.,
`IPR2013-00385 ..................................................................................................... 9
`
`Kyocera Corp. et al. v. Softview LLC,
`IPR2013-00004 ..................................................................................................... 9
`
`Motorola Mobility LLC v. Softview LLC,
`IPR2013-00256 ................................................................................................... 11
`
`In re Papst Licensing Digital Camera Patent Litigation,
`MDL 1880, Case No. 1-07-mc-00493 (D.D.C.) ................................................... 7
`
`Papst Licensing GmbH & Co. KG v. Apple Inc., et al.,
`Case No. 6:15-cv-01095 (E.D. Tex.) .................................................................... 6
`
`Samsung Electronics Co., Ltd., et al. v. Papst Licensing GmbH & Co.,
`KG, IPR2016-01733 ................................................................................. 5, 12, 15
`
`Sony Corp., et al. v. Memory Integrity, LLC,
`IPR2015-01353 ............................................................................................. 10, 14
`
`Statutes
`
`35 U.S.C. § 315(c) ................................................................................................. 5, 8
`
`35 U.S.C. § 316(a)(11) ............................................................................................. 12
`
`35 U.S.C. § 316(b) ................................................................................................... 10
`
`Other Authorities
`
`37 C.F.R. § 42.1(b) .................................................................................................. 10
`
`37 C.F.R. § 42.22 ................................................................................................... 6, 8
`
`3
`
`
`
`37 C.F.R. § 42.100(c) ............................................................................................... 12
`
`37 C.F.R. § 42.122(b) ............................................................................................ 6, 8
`
`157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) .................................................. 12
`
`
`
`
`
`
`
`4
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`
`
`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.
`
`9,189,437 (“Petition”) based on grounds identical to those presented in Samsung
`
`Electronics Co., Ltd., et al. v. Papst Licensing GmbH & Co., KG, IPR2016-01733
`
`(the “Samsung IPR”). The Samsung IPR was instituted on February 8, 2017.
`
`Samsung IPR, Paper 7 (Decision Granting Institution of Inter Partes Review) (Feb.
`
`8, 2017), at 2, 39. Pursuant to 35 U.S.C. § 315(c), LG respectfully requests and
`
`moves that its Petition be instituted and joined with the Samsung IPR, under the
`
`exact same trial schedule. The petitioners in the Samsung 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 Samsung IPR (“Samsung Petition”); (b) joinder will
`
`have no impact on the existing schedule in the Samsung IPR; and (c) joinder will
`
`promote the efficient resolution of issues, specifically whether U.S. Patent No.
`
`9,189,437 (“the ’437 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 ’437 patent
`
`and other related patents, LG has a significant interest in the underlying
`
`patentability determination at issue in the Samsung IPR. Joinder would protect
`
`5
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`
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`LG’s interests without affecting the scheduling or complexity of the pending
`
`Samsung IPR, and without prejudice to the petitioners in the Samsung IPR
`
`(“Samsung 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
`
`Samsung Petitioners are willing to agree to LG’s joinder, joinder with the Samsung
`
`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 February 8, 2017,
`
`the date on which the Samsung IPR was instituted. Samsung IPR, Paper 7.
`
`II. BACKGROUND AND RELATED PROCEEDINGS
`On September 2, 2016, the Samsung Petitioners filed a petition (the
`
`Samsung Petition) for inter partes review of the ’437 patent. On February 8, 2017,
`
`the Board issued a Decision Instituting Inter Partes Review of the ’437 patent
`
`based on the Samsung Petition. Samsung IPR, Paper 7. LG’s Petition presents the
`
`same grounds of unpatentability, the same prior art, and the same expert evidence
`
`as the Samsung Petition.
`
`The Samsung Petitioners are defendants in a litigation pending before the
`
`U.S. District Court for the Eastern District of Texas1 in which Patent Owner asserts
`
`1 Papst Licensing GmbH & Co. KG v. Apple Inc., et al., Case No. 6:15-cv-01095
`
`(E.D. Tex.) (lead case). Multiple additional cases, including a case filed against
`
`6
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`
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`infringement of the ’437 patent and related patents. LG is also a defendant in that
`
`litigation. The defendants in the Texas litigation have collectively filed seven
`
`petitions for inter partes review of the ’437 patent. Besides the Samsung Petition,
`
`the other petitions directed to the ’437 patent await institution decisions from the
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`Board.
`
`The defendants in the Texas litigation have filed twenty-one (21) additional
`
`petitions for inter partes review directed to patents related to the ’437 patent that
`
`are asserted in the Texas litigation. LG is a petitioner in five.2 Each of those five
`
`petitions is awaiting an institution decision from the Board.
`
`Finally, patents related to the ’437 patent have been asserted in a multi-
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`district litigation pending before the U.S. District Court for the District of
`
`Columbia.3 The defendants in the multi-district litigation have filed thirteen (13)
`
`petitions for inter partes review of those patents. Eight (8) of those petitions have
`
`
`LG and a case filed against the Samsung Petitioners, are consolidated into the lead
`
`case for discovery and pre-trial.
`
`2 The IPR petitions in which LG is a petitioner are IPR2017-00415, IPR2017-
`
`00443, IPR2017-00448, IPR2017-00672, and IPR2017-00678.
`
`3 In re Papst Licensing Digital Camera Patent Litigation, MDL 1880, Case No. 1-
`
`07-mc-00493 (D.D.C.).
`
`7
`
`
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`been granted at least in-part4 and proceedings have been instituted.
`
`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 Samsung 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 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
`
`4 The instituted IPRs filed by the multi-district litigation defendants are IPR2016-
`
`01199, IPR2016-01200, IPR2016-01211, IPR2016-01212, IPR2016-01213,
`
`IPR2016-01214, IPR2016-01216, and IPR2016-01225.
`
`8
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`
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`response, determines warrants the institution of an inter
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`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
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`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,
`
`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
`
`Samsung IPR is appropriate.
`
`Joinder Is Appropriate
`
`B.
`Joinder is appropriate in this case because it is the most expedient way to
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`9
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`
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`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 Samsung 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
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`schedule set forth in the Samsung IPR.
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`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
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`“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
`
`10
`
`
`
`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 are no different.
`
`1.
`
`LG’s Petition is Substantively Identical to the Samsung
`Petition.
`
`The instant Petition contains the same substance presented in the petition in
`
`the Samsung IPR. LG’s Petition challenges the same patent claims, contains the
`
`same grounds of unpatentability5, and is the same in all substantive aspects as the
`
`instituted Samsung IPR.
`
`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.
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`Because the Board has already instituted trial in the Samsung 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 Samsung IPR is appropriate. Indeed, in circumstances such as
`
`these, the PTO anticipated that joinder of proceedings would be granted as a matter
`
`
`5 The only difference, if any, in LG’s Petition is the inclusion of Footnote #1,
`
`which conforms to an assertion made by the Board in the Institution Decision for
`
`the Samsung IPR.
`
`11
`
`
`
`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 Samsung 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,
`
`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 Samsung IPR was instituted only one month ago. See Samsung IPR, Paper
`
`7.
`
`Further, LG agrees that the Scheduling Order issued in the Samsung IPR
`
`will apply to the joined proceeding. See Samsung IPR, Paper 8 (Scheduling Order)
`
`(Feb. 8, 2017). The first deadline is the Initial Conference Call, which has not yet
`
`occurred and which deadline is “Upon Request” by the parties. Id. at 6. In the
`
`12
`
`
`
`event that call occurs before LG is joined, LG agrees to be bound by any
`
`agreements or commitments made by the Samsung Petitioners on that call.
`
`The next deadline in the Samsung IPR is Patent Owner’s response to the
`
`petition and any motion to amend the petition, which is currently set for May 10,
`
`2017―over 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 Samsung Petition. None of the
`
`other deadlines should need to be extended following joinder of LG’s Petition to
`
`the Samsung IPR. In sum, no aspect of the trial schedule for the Samsung 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.
`
`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 Samsung 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
`
`13
`
`
`
`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
`
`Samsung Petitioners into a consolidated filing in the Samsung 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 Samsung Petitioners to manage any depositions within an
`
`ordinary time limit and to allow the Samsung Petitioners to take the lead in
`
`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 Samsung 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 Samsung Petitioners. In short, as long as the Samsung 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
`
`14
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`
`
`Samsung 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 Samsung
`
`IPR; and
`
` The scheduling order for the Samsung 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 Samsung Electronics Co., Ltd., et al. v.
`
`Papst Licensing GmbH & Co., KG, IPR2016-01733. Although no additional fee is
`
`believed to be required for this Motion, the Commissioner is hereby authorized to
`
`charge any additional fees which may be required for this Motion to Deposit Acct.
`
`No. 50-2428.
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`15
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`
`
`Dated: March 6, 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
`
`16
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Motion for
`
`Joinder was served on March 6, 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
`
`A courtesy copy is also being served to litigation counsel at:
`
`Christopher V. Goodpastor
`Andrew G. DiNovo
`Adam G. Price
`Jay D. Ellwanger
`DINOVO PRICE ELLWANGER & HARDY, LLP
`7000 N. MoPac Expressway, Suite 350
`Austin, Texas 78731
`Telephone: (512) 539-2626
`Facsimile: (512) 539-2627
`cgoodpastor@wattsguerra.com
`adinovo@dpelaw.com
`aprice@dpelaw.com
`jellwanger@dpelaw.com
`
`Dated: March 6, 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
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