Trials@uspto.gov
`571-272-7822
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` Paper No. 22
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`
` Entered: May 29, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A. INC.,
`LG ELECTRONICS MOBILECOMM U.S.A. INC.,
`LG ELECTRONICS MOBILE RESEARCH U.S.A. LLC, and
` LG ELECTRONICS ALABAMA, INC.,
`Petitioner,
`v.
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner.
`
`Case IPR2018-00461
`Patent 8,624,550 B2
`
`
`Before RAE LYNN P. GUEST, JO-ANNE M. KOKOSKI, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`
`DECISION
`Instituting Inter Partes Review and
`Granting Motion for Joinder
`35 U.S.C. §§ 314(a), 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`571-272-7822
`
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`
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` Paper No. 22
`
`
` Entered: May 29, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A. INC.,
`LG ELECTRONICS MOBILECOMM U.S.A. INC.,
`LG ELECTRONICS MOBILE RESEARCH U.S.A. LLC, and
` LG ELECTRONICS ALABAMA, INC.,
`Petitioner,
`v.
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner.
`
`Case IPR2018-00461
`Patent 8,624,550 B2
`
`
`Before RAE LYNN P. GUEST, JO-ANNE M. KOKOSKI, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`
`DECISION
`Instituting Inter Partes Review and
`Granting Motion for Joinder
`35 U.S.C. §§ 314(a), 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`IPR2018-00461
`Patent 8,624,550 B2
`
`INTRODUCTION
`I.
`LG Electronics, Inc., LG Electronics U.S.A. Inc., LG Electronics
`Mobilecomm U.S.A. Inc., LG Electronics Mobile Research U.S.A. LLC,
`and LG Electronics Alabama, Inc. (collectively, “Petitioner” or “LG
`Petitioners”) filed a Petition (Paper 1, “Pet.”) requesting inter partes review
`of claims 1–18 of U.S. Patent No. 8,624,550 B2 (Ex. 1001, “the ’550
`patent”). Petitioner also concurrently filed a Motion for Joinder seeking to
`join, as a Petitioner, in ZTE (USA) Inc., Samsung Electronics Co., Ltd., and
`Samsung Electronics America, Inc. v. Fundamental Innovation Systems
`International LLC, IPR2018-00111 (“ZTE/Samsung IPR”) (Paper 3,
`“Motion for Joinder” or “Mot.”). Fundamental Innovation Systems
`International LLC (“Patent Owner”) filed a Preliminary Response to the
`Petition (Paper 9, “Prelim. Resp.”) and an Opposition to Petitioner’s Motion
`for Joinder (Paper 8, “Opp.”).
`For the reasons set forth below, we institute inter partes review and
`grant Petitioner’s Motion for Joinder.
`
`INSTITUTION OF INTER PARTES REVIEW
`II.
`On May 9, 2018, we instituted trial in the ZTE/Samsung IPR with
`
`respect to all challenged claims and on all the grounds set forth in the
`petition. ZTE/Samsung IPR, Paper 16, 22. Petitioner represents that the
`current Petition includes the same grounds, arguments, and supporting
`evidence as the petition in the ZTE/Samsung IPR. Pet. 2 (“This petition is
`substantially identical to IPR2018-00111.”), Mot. 1 (asserting that the
`current Petition is “substantively identical to the petition” in the
`ZTE/Samsung IPR, challenges “the same claims of the ’550 patent on the
`
`2
`
`
`
`IPR2018-00461
`Patent 8,624,550 B2
`same grounds,” and relies upon “the same prior art, arguments, and
`evidence”).
`
`Patent Owner does not dispute that the current Petition is
`substantively identical to the ZTE/Samsung IPR petition, and generally
`presents the same arguments and supporting evidence in its Preliminary
`Response as it previously set forth in the ZTE/Samsung IPR. Patent Owner
`does assert, however, two additional arguments regarding the present
`Petition that require consideration.
`
`Patent Owner contends we should deny the Petition under 35 U.S.C.
`§ 325(d), because Petitioner never explains why it chose to file a second,
`identical petition, as opposed to joining the petitioners in the ZTE/Samsung
`IPR. Prelim. Resp. 18. According to Patent Owner, denying the Petition
`pursuant to § 325(d) will avoid “serial harassment of the patent owner” and
`“conserve resources.” Id. In this case, however, the LG Petitioners filed a
`concurrent motion to join the ZTE/Samsung IPR, effectively obviating any
`concerns of serial harassment and unnecessary expenditure of resources.
`Mot. 1. Thus, we decline to dismiss the Petition under 35 U.S.C. § 325(d).
`
`Patent Owner also contends the Petition should be denied because
`Petitioner has failed to identify all real parties-in-interest (“RPI”). Prelim.
`Resp. 18. Specifically, Patent Owner contends that LG Corporation is an
`unidentified RPI in this proceeding in view of its ownership of “10 percent
`or more of LG Electronics, Inc.’s stock.” Id. (citing Ex. 2007, 2).
`Under 35 U.S.C. § 312(a)(2), a petition may be considered only if “the
`petition identifies all real parties in interest.” “To decide whether a party
`other than the petitioner is the real party in interest,” we seek to determine
`“whether some party other than the petitioner is the ‘party or parties at
`
`3
`
`
`
`IPR2018-00461
`Patent 8,624,550 B2
`whose behest the petition has been filed.’” Wi-Fi One, LLC v. Broadcom
`Corp., 887 F.3d 1329, 1336 (Fed. Cir. 2018) (quoting Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012)). One
`common consideration in determining whether a non-party is an RPI is
`whether that non-party “exercised or could have exercised control over a
`party’s participation in a proceeding.” Office Patent Trial Practice Guide,
`77 Fed. Reg. at 48,759; see Wi-Fi One, 887 F.3d at 1329 (agreeing that a
`“party that funds and directs and controls an IPR” is a “real party-in-
`interest”).
`Here, Patent Owner’s sole evidence that LG Corporation should have
`been identified as an RPI is a corporate disclosure showing that LG
`Corporation owns “10 percent or more of LG Electronics, Inc.’s stock.”
`Prelim. Resp. 18 (citing Ex. 2007, 2). This evidence does not demonstrate
`or suggest that the Petition was filed at LG Corporation’s behest, or that LG
`Corporation exercised or could have exercised control over LG Electronics,
`Inc.’s participation in this proceeding. See Wi-Fi One, 887 F.3d at 1329; see
`also Par Pharma., Inc. v. Jazz Pharma, Inc., IPR2015-00546, slip. op. at
`15–19 (PTAB July 28, 2015) (Paper 25) (noting that corporate ownership,
`even if that ownership is complete, is not sufficient, by itself, to show a non-
`party is an RPI). Thus, we decline to dismiss the Petition for failure to name
`all RPIs under 35 U.S.C. § 312(a)(2).
`In view of the identity of the challenge between the present Petition
`and that filed in the ZTE/Samsung IPR, and for the reasons set forth in the
`Decision to Institute in the ZTE/Samsung IPR, which we hereby incorporate
`by reference, we institute inter partes review in this proceeding with respect
`
`4
`
`
`
`IPR2018-00461
`Patent 8,624,550 B2
`to all challenged claims and on all asserted grounds. See ZTE/Samsung IPR,
`Paper 16, 6–22.
`
`III. MOTION FOR JOINDER
`As noted above, Petitioner requests that we join the present
`
`proceeding with IPR2018-00111. Mot. 1. Petitioner represents that it has
`conferred with petitioner’s counsel in the ZTE/Samsung IPR and they do not
`oppose the Motion.
`Joinder is governed by 35 U.S.C. § 315(c), which recites:
`(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
`parties review under section 314.
`By regulation, the Director’s discretion to join proceedings has been
`delegated to the Board. See 37 C.F.R. § 42.4(a). Thus, we have discretion
`to join the LG Petitioners to the instituted ZTE/Samsung IPR, if such an
`action is warranted.
`Petitioner contends joinder is appropriate in this case because: (1) the
`Motion is timely, having been filed at the same time as the Petition; (2) the
`Petition is substantively identical to the petition in the ZTE/Samsung IPR,
`relying on the same arguments, evidence, and declaration testimony;
`(3) Petitioner agrees to an “understudy role” in the joined proceeding, in
`which it “will not materially participate in calls with the Board, depositions,
`and any oral hearing”; and (4) joinder will eliminate the need for two
`parallel, but identical, inter partes review proceedings. Mot. 1–2, 5–6 n.1, 8.
`
`5
`
`
`
`IPR2018-00461
`Patent 8,624,550 B2
`Patent Owner opposes the Motion for Joinder, asserting that addition
`of the LG Petitioners to the ZTE/Samsung IPR would add “significant
`complexity” to the proceedings with little added benefit. Opp. 1, 5. In
`particular, Patent Owner argues that the issue of whether LG Corporation is
`an RPI will require additional discovery that could potentially delay the
`schedule previously set forth for IPR2018-00111; Petitioner’s proposed
`“understudy” role is redundant, as there are already two distinct petitioners
`in the ZTE/Samsung IPR; and joining the LG Petitioners would require
`Patent Owner’s counsel to coordinate conference calls, discovery, and
`depositions with three—instead of two—sets of attorneys. Id. at 5–7. Patent
`Owner further argues that permitting Petitioner’s counsel to participate in
`direct, cross-examination, and redirect, will allow for examination by three
`sets of attorneys, “a tactic” Patent Owner contends “often results in
`repetitive and harassing depositions.” Id. at 5–6.
`Having considered Petitioner’s Motion, as well as Patent Owner’s
`Opposition, we determine that joinder of the present proceeding with the
`ZTE/Samsung IPR is appropriate. First, for the reasons discussed above,
`Patent Owner has set forth insufficient evidence to demonstrate that the
`Petition fails to identify all RPIs. Thus, the prospect of additional discovery
`being required to address RPI issues is speculative, at best. Second,
`Petitioner expressly represents that it “will not materially participate” in
`calls with the Board, depositions, or the oral hearing, thereby eliminating
`Patent Owner’s concern regarding repetitive and harassing depositions due
`to the presence of a third set of attorneys. Mot. 6 n.1.1 Finally, although
`
`
`1 Petitioner represents that it will assume the primary role in the joined
`proceeding “only if ZTE/Samsung cease to participate” in the IPR. Mot. 7.
`
`6
`
`
`
`IPR2018-00461
`Patent 8,624,550 B2
`joinder may require Patent Owner to coordinate depositions and conference
`calls with additional counsel, this added complexity and effort is relatively
`minor when compared to conducting parallel IPR proceedings directed to the
`same claims, arguments, and evidence. Accordingly, we grant Petitioner’s
`Motion for Joinder, subject to the requirements set forth in the Order below.
`
`IV. ORDER
`
`It is hereby:
`
`ORDERED that IPR2018-00461 is instituted with respect to all claims
`
`and on all grounds set forth in the Petition;
`
`FURTHER ORDERED that Petitioner’s Motion for Joinder is
`granted;
`
`FURTHER ORDERED that the Scheduling Order in place in
`IPR2018-00111 shall continue to govern the joined proceeding;
`
`FURTHER ORDERED that in IPR2018-00111, any paper, except for
`a motion that does not involve the other party, shall be filed by the
`ZTE/Samsung and LG Petitioners as a single, consolidated filing, pursuant
`to the word count or page limits set forth in 37 C.F.R. § 42.24;
`
`FURTHER ORDERED that, except as otherwise agreed by all parties
`or ordered by the Board, and unless an issue solely relating to the LG
`Petitioners is involved, counsel for the LG Petitioners shall not actively
`participate in conference calls, depositions, or oral argument;
`
`FURTHER ORDERED that IPR2018-00461 is terminated under
`37 C.F.R. § 42.72 and all further filings in this proceeding shall be made in
`IPR2018-00111;
`
`FURTHER ORDERED that a copy of this Decision will be entered
`into the records of IPR2018-00111 and IPR2018-00461; and
`
`7
`
`
`
`IPR2018-00461
`Patent 8,624,550 B2
`
`FURTHER ORDERED that the case caption in IPR2018-00111 shall
`be changed in accordance with the attached example.
`
`PETITIONER:
`David L. McCombs
`Gregory P. Huh
`David M. O’Dell
`HAYNES AND BOONE, LLP
`david.mccombs.ipr@haynesboone.com
`gregory.huh.ipr@haynesboone.com
`david.odell.ipr@haynesboone.com
`Charles M. McMahon
`Hersh H. Mehta
`MCDERMOTT WILL & EMERY LLP
`cmcmahon@mwe.com
`hmehta@mwe.com
`Gregory S. Arovas
`Robert A. Appleby
`Todd M. Friedman
`Eugene Goryunov
`Alan Rabinowitz
`KIRKLAND & ELLIS LLP
`greg.arovas@kirkland.com
`robert.appleby@kirkland.com
`todd.friedman@kirkland.com
`eugene.goryunov@kirkland.com
`arabinowitz@kirkland.com
`
`
`PATENT OWNER:
`Hong Annita Zhong
`Michael Fleming
`IRELL & MANELLA LLP
`hzhong@irell.com
`mfleming@irell.com
`
`
`
`8
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`Trials@uspto.gov
`571-272-7822
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`Paper No.
`Entered:
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZTE (USA) INC., SAMSUNG ELECTRONICS CO., LTD.
`SAMSUNG ELECTRONICS AMERICA, INC.
`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A. INC.,
`LG ELECTRONICS MOBILECOMM U.S.A. INC.,
`LG ELECTRONICS MOBILE RESEARCH U.S.A. LLC, and
` LG ELECTRONICS ALABAMA, INC.
`Petitioner,
`v.
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner.
`
`
`Case IPR2018-001112
`Patent 8,624,550 B2
`
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`2 LG Electronics, Inc., LG Electronics U.S.A. Inc., LG Electronics
`Mobilecomm U.S.A. Inc., LG Electronics Mobile Research U.S.A. LLC,
`and LG Electronics Alabama, Inc. were joined as parties to this proceeding
`via a Motion for Joinder in IPR2018-00461.
`
`
`
`
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