UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS, INC.
`Petitioner
`
`v.
`
`UNILOC LUXEMBOURG, S.A.,
`Patent Owner
`
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,995,433
`Case IPR No.: IPR2017-02087
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b))
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS, INC.
`Petitioner
`
`v.
`
`UNILOC LUXEMBOURG, S.A.,
`Patent Owner
`
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,995,433
`Case IPR No.: IPR2017-02087
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b))
`
`
`
`
`
`
`
`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioner LG
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`Electronics, Inc. moves for joinder with the Inter Partes Review of U.S. Patent No.
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`8,995,433, Facebook, Inc., WhatsApp Inc. v. Uniloc USA, Inc. Uniloc Luxembourg,
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`S.A., IPR2017-01427 (“the Facebook IPR”), for which an institution decision is
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`pending. This motion is timely because it is filed prior to institution of the
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`Facebook IPR. 37 C.F.R. § 42.122(b). Petitioners understand that the petitioners
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`in the Facebook IPR do not oppose Petitioners' request for joinder
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`Petitioner requests institution of its concurrently filed Petition for Inter
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`Partes Review. The Petition is a carbon copy of the original Facebook IPR
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`petition in all material respects. The only changes are in the introduction to
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`identify the correct Petitioner and the mandatory notices under 37 C.F.R. § 42.8(b).
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`The concurrently filed Petition and the Facebook IPR petition challenge the same
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`claims of the ’433 patent on the same grounds relying on the same prior art and
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`evidence, including a declaration identical in substance from the same expert.1
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`Petitioner requests that the institution of its Petition be limited solely to the
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`grounds that will be instituted in the Facebook IPR. Petitioner agrees to proceed
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`1 The declaration has been updated only to reflect retention by Petitioner and is
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`otherwise identical to the declaration submitted in the Facebook IPR.
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`-1-
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`solely on the grounds, evidence, and arguments advanced, or that will be advanced,
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`in the Facebook IPR as instituted. Thus, the Petition warrants institution under
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`35 U.S.C. § 314, and 35 U.S.C. § 315(c) permits Petitioner’s joinder to the
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`Facebook IPR.
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`Further, if joined, Petitioner agrees to adhere to all applicable deadlines in
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`the Facebook IPR and coordinate all filings with the Petitioner in the Facebook
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`IPR (“the Facebook Petitioner”). The Facebook Petitioner will maintain the lead
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`role in the proceedings so long as it is a party to the proceedings. Petitioner agrees
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`to consolidated filings for all substantive papers in the proceeding. The Facebook
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`Petitioner and Petitioner will be jointly responsible for the consolidated filings.
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`Petitioner will not advance any arguments separate from those advanced by the
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`Facebook Petitioner in the consolidated filings. These limitations will avoid
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`lengthy and duplicative briefing. Also, Petitioner will not seek additional
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`depositions or deposition time, and will coordinate deposition questioning and
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`hearing presentations with the Facebook Petitioner. Petitioner agrees to the
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`foregoing conditions even in the event that other IPRs filed by other, third-party
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`petitioners are joined with the Facebook IPR.
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`Joinder will help efficiently resolve the disputes among the parties. By
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`joinder, a single Board decision may dispose of the issues raised in the Facebook
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`IPR for all interested parties. Further, the Patent Owner has asserted the ’433
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`-2-
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`
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`patent in district court against LG Electronics, Inc., and LG Electronics U.S.A.,
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`Inc. (“LGE”). Joinder will estop LGE from asserting in district court those issues
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`resolved in a final written decision in the Facebook IPR, thus narrowing the issues
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`in the district court actions. See 35 U.S.C. § 315(e)(2). Finally, joinder would not
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`complicate or delay the Facebook IPR, and would not adversely affect any
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`schedule set in that proceeding. In sum, joinder would promote efficient
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`adjudication in multiple forums. On the other hand, if instituted, maintaining the
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`Petitioner’s IPR proceeding separate from that of the Facebook IPR would entail
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`needless duplication of effort.
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`Joinder will not unduly prejudice any party. Because joinder will not add
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`any new substantive issues, delay the schedule, burden deponents, or increase
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`needless filings, any additional costs on the Patent Owner would be minimal. On
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`the other hand, denial of joinder would prejudice LGE. Their interests may not be
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`adequately protected in the Facebook IPR proceedings, particularly if the Facebook
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`Petitioner settles with the Patent Owner. Petitioner should be allowed to join in a
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`proceeding affecting a patent asserted against it.
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`II. BACKGROUND AND RELATED PROCEEDINGS
`Uniloc Luxembourg, S.A. (the “Patent Owner”) is the owner of the ’433
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`Patent. The Patent Owner asserted the ’433 Patent against LGE in Uniloc USA,
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`Inc. et al. v. LG Electronics U.S.A., Inc., Case No. 2:16-cv-00991-JRG (E.D. Tex.
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`-3-
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`
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`Filed Sept. 6, 2016), which has been consolidated for pretrial purposes with Uniloc
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`USA, Inc. et al. v. Motorola Mobility LLC, Case No. 2:16-cv-00992-JRG (E.D.
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`Tex.) (lead case). In addition, the Patent Owner asserted the ’433 Patent against
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`Facebook, Inc. (“Facebook”) and WhatsApp Inc. (“WhatsApp”), among others, in
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`Uniloc USA, Inc. et al. v. Samsung Electronics America, Inc., Case No. 2:16-cv-
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`00642-JRG (E.D. Tex.). On May 11, 2017, Facebook and WhatsApp filed their
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`IPR petition, IPR2017-01427, against the ’433 patent. The Board has not yet
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`decided whether to institute the Facebook IPR. Petitioner here moves for joinder
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`with the Facebook IPR.
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`III. STATEMENT OF REASONS FOR THE REQUESTED RELIEF
`A. Legal Standards and Applicable Rules
`The time limitation set forth in 35 U.S.C. § 315(b) does not apply to a
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`request for joinder. 35 U.S.C. § 315(b). The Board has discretion to join a
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`properly filed IPR petition to an IPR proceeding. 35 U.S.C. § 315(c); 37 C.F.R.
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`§ 42.122(b); see also Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00385,
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`Paper 19, at 4-6; Sony Corp. v. Yissum Res. & Dev. Co. of the Hebrew Univ. of
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`Jerusalem, IPR2013- 00326, Paper 15, at 3-4; Microsoft Corp. v. Proxyconn, Inc.,
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`IPR2013-00109, Paper 15, at 3-4. “The Board will determine whether to grant
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`joinder on a case-by-case basis, taking into account the particular facts of each
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`case, substantive and procedural issues, and other considerations.” Dell, IPR2013-
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`-4-
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`
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`00385, Paper 19, at 3. The movants bear the burden of proof in establishing
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`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A motion for
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`joinder should:
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`(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.
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`Dell, IPR2013-00385, Paper 19, at 4.
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`B.
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`Joinder will not add any new grounds of unpatentability or have
`an impact on the trial schedule.
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`The Petition is based on the same grounds and combinations of prior art that
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`the Board will consider in deciding whether to institute the Facebook IPR. For
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`simplicity and efficiency, Petitioner has copied the substance of Facebook’s
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`petition and accompanying declaration. Petitioner does not seek to reintroduce
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`grounds or claims not in the Facebook IPR and seeks only to join the proceeding as
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`instituted. Petitioner retained the same expert, who has submitted an identical
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`declaration as in the Facebook IPR. The Patent Owner should not require any
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`discovery beyond that which it may need in the Facebook IPR—nor should the
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`Board permit any. The Petition presents no new substantive issues relative to the
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`Facebook IPR and does not seek to broaden the scope of the Facebook IPR.
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`-5-
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`
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`For efficiency’s sake, Petitioner will:
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`1. Adhere to all applicable deadlines in the Facebook IPR;
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`2. Submit “consolidated” filings with the Facebook Petitioner, as set
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`forth above in the statement of precise relief requested;
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`3. Refrain from requesting or reserving any additional depositions or
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`deposition time;
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`4. Refrain from requesting or reserving additional oral hearing time; and
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`5. Assume a second-chair role as long as the Facebook Petitioner
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`remains in the proceeding.2
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`In view of these provisions, joinder should not affect the trial schedule.
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`C.
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`Joinder will promote efficiency by consolidating issues, avoiding
`wasteful duplication, and preventing inconsistency.
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`Petitioner presents identical arguments and supporting evidence as the
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`Facebook IPR. Joinder will simplify briefing and discovery. Given that the
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`Facebook IPR and the Petition address the same prior art and grounds for rejection
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`2 These limitations are consistent with previously granted joinder motions. See,
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`e.g., Enzymotech Ltd. v. Neptune Techs., IPR2014-00556, Paper 19 (July 9, 2014)
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`(agreeing to procedural concessions, such as “consolidated” responses); Gillette
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`Co. v. Zond, IPR2014-01016, Paper 13 (Nov. 10, 2014) (same); SAP Am. Inc. v.
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`Clouding IP, LLC, IPR2014-00306, Paper 13 (May 19, 2014) (same).
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`-6-
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`
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`of the same claims, joining these proceedings allows for joint submissions and
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`discovery, further streamlining the proceedings. This should promote efficiency
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`and conserve the Board’s and the parties’ resources. Further, joinder will estop
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`LGE from asserting in district court those issues resolved in a final written decision
`
`in the Facebook IPR, thus narrowing the issues in the district court actions. See
`
`35 U.S.C. § 315(e)(2).
`
`Joinder is Appropriate
`
`D.
`The Board has previously stated that it is “mindful of a policy preference for
`
`joining a party that does not present new issues.” Enzymotec Ltd. v. Neptune Techs
`
`& Bioresources, Inc. IPR2014-00556, Paper No. 19 at 6 (July 9, 2014) (citing 157
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`CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office
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`anticipates that joinder will be allowed as of right – if an inter partes review is
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`instituted on the basis of a petition, for example, a party that files an identical
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`petition will be joined to that proceeding, and thus allowed to file its own briefs
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`and make its own arguments.”))
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`Here, because Petitioner seeks institution solely on the grounds, evidence,
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`and arguments advanced, or that will be advanced, in the Facebook IPR, institution
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`is warranted under 35 U.S.C. § 314 and Petitioner’s joinder to the Facebook IPR is
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`appropriate under 35 U.S.C. § 315(c). No new grounds of unpatentability are
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`asserted. As explained above, joinder would not adversely impact the trial
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`-7-
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`schedule, briefing, or discovery in the Facebook IPR, and the remaining equities
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`compel joinder.
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`Petitioner is filing this Petition and joinder motion to ensure that the trial is
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`completed in the event that the Facebook Petitioner reaches settlement with Patent
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`Owner.
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`1. Without joinder, LGE will be prejudiced
`A denial of joinder would prejudice LGE. Their substantial interests, as
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`parties against whom the ’433 patent has been asserted in a federal district court
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`action, may not be adequately protected by the Facebook Petitioner in the
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`Facebook IPR proceedings. For example, LGE has an interest that the Facebook
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`IPR reach a final determination to facilitate a timely and cost-effective end to the
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`controversy between LGE and the Patent Owner. LGE should be allowed to join
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`in a proceeding affecting a patent asserted against it.
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`Joinder will not unduly prejudice any party
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`2.
`The Petition raises issues already before the Board and long known to the
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`Patent Owner. Addressing patent validity in this proceeding, well on its way
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`towards a final determination, serves the parties’ and Board’s interests.
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`IV. CONCLUSION
`Joinder will not affect the substance, procedure, or scheduling of the
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`Facebook IPR. Petitioner files this motion under the statutory joinder provisions as
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`-8-
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`contemplated by the AIA. Joinder will simplify the issues and promote efficiency,
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`justice, and speed.
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`For the foregoing reasons, Petitioner respectfully requests inter partes
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`review of U.S. Patent No. 8,995,433 and joinder with Facebook, Inc., WhatsApp
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`Inc. v. Uniloc USA, Inc. Uniloc Luxembourg, S.A., IPR2017-01427.3
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`Dated: September 11, 2017
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`
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` Respectfully submitted,
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` By: / Anand K. Sharma/
` Anand K. Sharma, Lead Counsel
` Reg. No. 43,916
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`
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`3 Although no fee is believed to be required, the Commissioner is authorized to
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`charge any additional fees required for this Motion, to Deposit Account No. 06-
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`0916.
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`-9-
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that the foregoing
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`MOTION FOR JOINDER TO INTER PARTES REVIEW is being served via
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`Federal Express on the 11th day of September, 2017, the same day as the filing of
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`the above-identified document in the United States Patent and Trademark
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`Office/Patent Trial and Appeal Board, upon the Patent Owner by serving the
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`correspondence address of record with the USPTO as follows:
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`Sean Burdick
`Dianoosh Salehi
`Uniloc USA, Inc.,
`Legacy Town Center
`7160 Dallas Parkway, Suite 380
`Plano Texas 75024
`972-905-9580
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`and upon counsel of record for the Patent Owner in the litigations pending before
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`the U.S. District Court for the Eastern District of Texas entitled Uniloc USA, Inc.
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`et al. v. LG Electronics U.S.A., Inc. et al., Case No. 2:16-cv-00991-JRG as follows:
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`Paul J. Hayes
`Kevin Gannon
`Prince Lobel Tye LLP
`One International Place, Suite 3700
`Boston, MA 02210
`617-456-8000
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`Anthony Michael Vecchione
`Edward R Nelson, III
`Nelson Bumgardner PC
`3131 West 7th Street, Suite 300
`Ft Worth, TX 76107
`817-377-9111
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`Dated: September 11, 2017
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`By: /Lauren K. Young/
`Lauren K. Young
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
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