U.S. Patent No. 8,624,550 Claims 1-18
`Petitioner’s Motion for Joinder
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`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
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`v.
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`Fundamental Innovation Systems International LLC,
`Patent Owner
`
`Case IPR2018-00460
`U.S. Patent No. 8,624,550
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`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, and 42.122(b)
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`Petitioner’s Motion for Joinder
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`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 IPR2018-00460
`U.S. Patent No. 8,624,550
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`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, and 42.122(b)
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`U.S. Patent No. 8,624,550 Claims 1-18
`IPR2018-00460 / Petitioner’s Motion for Joinder
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`TABLE OF CONTENTS
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`I.
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`STATEMENT OF RELIEF REQUESTED ...................................................... 1
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`II. STATEMENT OF MATERIAL FACTS .......................................................... 2
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`III. STATEMENT OF REASONS FOR REQUESTED RELIEF .......................... 2
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`A. Legal Standards ........................................................................................ 2
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`B. LGE’s Motion for Joinder is Timely ........................................................ 3
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`C.
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`Joinder is Appropriate .............................................................................. 4
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`1. No New Grounds of Unpatentability in the Petition ........................ 5
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`2. No Impact on the Schedule for the Existing IPR Proceeding .......... 5
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`3. Briefing and Discovery Will be Simplified ..................................... 6
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`4. No Prejudice to Patent Owner .......................................................... 8
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`IV. CONCLUSION .................................................................................................. 8
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`I.
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`U.S. Patent No. 8,624,550 Claims 1-18
`IPR2018-00460 / Petitioner’s Motion for Joinder
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`STATEMENT OF RELIEF REQUESTED
`LG Electronics, Inc., LG Electronics U.S.A. Inc., LG Electronics
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`Mobilecomm U.S.A. Inc., LG Electronics Mobile Research U.S.A. LLC, and LG
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`Electronics Alabama, Inc. (collectively “LGE” or “Petitioners”) respectfully
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`submit this Motion for Joinder together with a Petition for Inter Partes Review of
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`U.S. Patent No. 8,624,550 (“LGE’s Petition”). Pursuant to 35 U.S.C. § 315(c) and
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`37 C.F.R. § 42.122(b), LGE requests inter partes review and joinder with ZTE
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`(USA) Inc., Samsung Electronics Co., Ltd., and Samsung Electronics America,
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`Inc.,. v. Fundamental Innovation Systems International LLC, IPR2018-00110 (“the
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`ZTE/Samsung IPR”), which was filed on October 26, 2017. LGE’s Petition is
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`substantively identical to the petition in the ZTE/Samsung IPR—challenging the
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`same claims of the ’550 Patent on the same grounds while relying on the same
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`prior art, arguments, and evidence. This Motion for Joinder and accompanying
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`Petition are timely, being filed before a decision instituting trial in the
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`ZTE/Samsung IPR. Counsel for LGE has conferred with petitioner’s counsel in the
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`ZTE/Samsung IPR, and this Motion for Joinder is not opposed.
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`Joinder is appropriate here because (i) LGE’s Petition is substantively
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`identical to the petition in the ZTE/Samsung IPR and (ii) LGE agrees to an
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`“understudy role” and relies upon the same expert declaration as relied upon in the
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`1
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`U.S. Patent No. 8,624,550 Claims 1-18
`IPR2018-00460 / Petitioner’s Motion for Joinder
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`ZTE/Samsung IPR, simplifying briefing and discovery. Accordingly, joinder will
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`provide for a just, speedy, and inexpensive determination of related proceedings.
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`Accordingly, LGE respectfully requests that the Board grant this Motion for
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`Joinder.
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`II.
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`STATEMENT OF MATERIAL FACTS
`The owner of the ’550 Patent, Fundamental Innovation Systems
`1.
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`International LLC (“FISI”), sued LGE alleging infringement of the ’550 Patent in
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`the United States District Court for the Eastern District of Texas.
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`2.
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`3.
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`LGE was served with FISI’s complaint on January 18, 2017.
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`On October 26, 2017, ZTE (USA) Inc., Samsung Electronics Co.,
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`Ltd., and Samsung Electronics America, Inc., (collectively “ZTE”), which had also
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`been served with a complaint alleging infringement of the ’550 Patent, timely filed
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`a Petition for inter partes review challenging claims 1-18 of the ’550 Patent. See
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`ZTE (USA) Inc., et al. v. Fundamental Innovation Systems International LLC,
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`IPR2018-00110, Paper 1 (PTAB Oct. 26, 2017).
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`4.
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`LGE’s Petition and this motion are being filed before a decision on
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`institution of the ZTE/Samsung IPR.
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`III. STATEMENT OF REASONS FOR REQUESTED RELIEF
`A. Legal Standards
`The Board has authority under 35 U.S.C. § 315(c) to join a party who files a
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`U.S. Patent No. 8,624,550 Claims 1-18
`IPR2018-00460 / Petitioner’s Motion for Joinder
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`proper inter partes review petition to a previously filed inter partes review
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`proceeding. This authority is discretionary. 35 U.S.C. § 315(c); 37 C.F.R.
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`§ 42.122. The moving party has the burden of proof and should: (1) set forth the
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`reasons why joinder is appropriate; (2) identify any new grounds of unpatentability
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`asserted in the petition; (3) explain what impact (if any) joinder would have on the
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`trial schedule for the existing review; and (4) address specifically how briefing and
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`discovery may be simplified. Dell Inc. v. Network-1 Sec. Solutions, Inc, IPR2013-
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`00385, Paper 17 at 3-4 (PTAB July 29, 2013).
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`The legislative history of the AIA suggests that the joinder may be granted
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`as a matter of right where the later petitioner files an identical petition with
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`identical grounds of unpatentability. See 157 CONG. REC. S1376 (daily ed. Mar.
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`8, 2011) (statement of Sen. Kyl) (“The Office anticipates that joinder will be
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`allowed as of right-if an inter partes review is instituted on the basis of a petition,
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`for example, a party that files an identical petition will be joined to that
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`proceeding, and thus allowed to file its own briefs and make its own arguments.”)
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`(emphasis added).
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`LGE’s Motion for Joinder is Timely
`B.
`A Motion for Joinder is timely if the moving party files within one month of
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`institution of the inter partes review for which joinder is requested. 37 C.F.R.
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`3
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`U.S. Patent No. 8,624,550 Claims 1-18
`IPR2018-00460 / Petitioner’s Motion for Joinder
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`§ 42.122(b). Because LGE files this motion before a decision on the institution of
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`the ZTE/Samsung IPR, this motion is timely. Additionally, this Motion for Joinder
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`is being filed before any motions have been filed requesting termination of the
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`ZTE/Samsung IPR.
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`Joinder is Appropriate
`C.
`Although joinder is discretionary, it is appropriate here because LGE’s
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`Petition does “not present issues that might complicate or delay” the existing
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`ZTE/Samsung IPR. See Enzymotec Ltd. v. Neptune Techs & Bioresources, Inc.,
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`IPR2014-00556, Paper 19 at 6 (July 9, 2014) (“we are mindful of a policy
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`preference for joining a party that does not present new issues that might
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`complicate or delay an existing proceeding”). In fact, because LGE’s Petition is
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`substantively identical to the petition in the ZTE/Samsung IPR, joinder would
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`secure the just, speedy, and inexpensive resolution of the related proceedings.
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`Joinder would have little, if any, impact on the ZTE/Samsung IPR because no new
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`grounds would be added, the schedule would not be affected, no additional briefing
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`or discovery would be required, and no additional burdens would be placed on
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`Patent Owner, as detailed below.
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`Further, if ZTE/Samsung moves to terminate the ZTE/Samsung IPR and is
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`dismissed before the Board decides this Motion for Joinder, LGE respectfully
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`4
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`U.S. Patent No. 8,624,550 Claims 1-18
`IPR2018-00460 / Petitioner’s Motion for Joinder
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`requests that the Board exercise its discretion and decline to terminate the Patent
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`Owner at least until the Board considers this motion.
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`Accordingly, joinder is appropriate because it eliminates the possibility of
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`duplicate efforts and ensures a just, speedy, and inexpensive resolution of these
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`proceedings.
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`1.
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`No New Grounds of Unpatentability in the Petition
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`LGE’s Petition is substantively identical to the petition in the ZTE/Samsung
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`IPR. In particular, LGE’s Petition challenges the same claims (1-18) under the
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`same grounds, while relying on the same arguments, expert declaration, and
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`evidence. Accordingly, no new claims and no new grounds will be added to the
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`ZTE/Samsung IPR as a result of the Board allowing joinder. Denial of joinder,
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`however, would result in parallel proceedings involving identical grounds of
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`unpatentability and needless duplication of effort.
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`2.
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`No Impact on the Schedule for the Existing IPR Proceeding
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`Because LGE’s Petition challenges no additional claims and raises no new
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`grounds of unpatentability, joinder should have no impact on any trial schedule of
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`the ZTE/Samsung IPR. LGE will adhere to all applicable deadlines set forth in the
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`ZTE/Samsung IPR Scheduling Order and will coordinate with ZTE’s counsel to
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`consolidate filings. Additionally, no additional expert discovery will be needed as
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`5
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`U.S. Patent No. 8,624,550 Claims 1-18
`IPR2018-00460 / Petitioner’s Motion for Joinder
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`LGE’s Petition relies upon the same declaration testimony from the same expert,
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`Mr. James Geier, as relied upon by the petition in the ZTE/Samsung IPR.
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`Additionally, if joined, LGE will not file additional briefs outside of the
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`consolidated filings, will not request any additional deposition time, and will not
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`request any additional oral hearing time.1 In the event the ZTE/Samsung IPR is
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`terminated with respect to the petitioner, LGE intends to “step into the shoes” of
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`the dismissed petitioner and materially participate in the joined proceedings.
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`Accordingly, for the reasons above, joinder of LGE to the ZTE/Samsung
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`IPR will not affect the Board’s ability to complete its review and issue a final
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`decision within the statutory time limits under 35 U.S.C. § 316(a)(11) and 37
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`C.F.R. § 42.100(c).
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`3.
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`Briefing and Discovery Will be Simplified
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`Given that LGE’s positions in its petition are identical to the positions in the
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`ZTE/Samsung IPR, LGE agrees to consolidated filings for all substantive papers
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`1 While LGE will not materially participate in calls with the Board, depositions,
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`and any oral hearing, LGE anticipates that its counsel may attend such events.
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`Additionally, LGE’s role does not foreclose communication between LGE and
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`other petitioners in the ZTE/Samsung IPR.
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`6
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`U.S. Patent No. 8,624,550 Claims 1-18
`IPR2018-00460 / Petitioner’s Motion for Joinder
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`and to consolidated discovery in the joined proceeding. LGE explicitly agrees to
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`take an “understudy” role, described by the Board in other proceedings:
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`(a) all filings by [LGE] in the joined proceeding be consolidated with
`[the filings of the petitioners in the ZTE/Samsung IPR], unless a filing
`solely concerns issues that do not involve [the petitioners in the
`ZTE/Samsung IPR]; (b) [LGE] shall not be permitted to raise any new
`grounds not already instituted by the Board in the [ZTE/Samsung
`IPR], or introduce any argument or discovery not already introduced
`by [the petitioners in the ZTE/Samsung IPR]; (c) [LGE] shall be
`bound by any agreement between [Patent Owner] and [the petitioners
`in the ZTE/Samsung IPR] concerning discovery and/or depositions;
`and (d) [LGE] at deposition shall not receive any direct,
`crossexamination or redirect time beyond that permitted for [the
`petitioners in the ZTE/Samsung IPR] alone under either 37 C.F.R. §
`42.53 or any agreement between [Patent Owner] and [the petitioners
`in the ZTE/Samsung IPR].
`See IPR2014-00550, No. 38 at 5 (P.T.A.B. Apr. 10, 2015). LGE will assume the
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`primary role only if ZTE/Samsung cease to participate in the ZTE/Samsung IPR.
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`LGE is essentially asking the Board to join them as a party to the ZTE/Samsung
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`IPR. Target Corp. v. Destination Maternity Corp., IPR2014-00508, Paper 18, pp.
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`10-11. The petitioners in the ZTE/Samsung IPR have no objection to LGE joining
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`in an “understudy” role.
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`7
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`U.S. Patent No. 8,624,550 Claims 1-18
`IPR2018-00460 / Petitioner’s Motion for Joinder
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`By accepting an “understudy” role, LGE can comply with the current
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`schedule and avoid any duplication of effort by the Board or the Patent Owner.
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`These steps will minimize any potential complications or delay that potentially
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`may have resulted by joinder.
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`4.
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`No Prejudice to Patent Owner
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`Joinder of LGE to the ZTE/Samsung IPR will not create any additional
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`burden on Patent Owner. The Patent Owner need not expend any additional
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`resources above and beyond those required in the current ZTE/Samsung IPR.
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`Moreover, joinder eliminates the need for Patent Owner to participate in parallel
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`inter partes review proceedings instituted upon identical grounds of patentability.
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`IV. CONCLUSION
`For the foregoing reasons, LGE respectfully requests that the Board institute
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`the instant inter partes review upon the same grounds in IPR2018-00110 and join
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`the proceedings.
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`Dated: January 11, 2018
`HAYNES AND BOONE, LLP
`Customer No. 27683
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`Telephone: 214-651-5533
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`Facsimile: 214-200-0853
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`Respectfully submitted,
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`/David L. McCombs/
`David L. McCombs
`Lead Counsel for Petitioners
`Registration No. 32,271
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`8
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`U.S. Patent No. 8,624,550 Claims 1-18
`IPR2018-00460 / Petitioner’s Motion for Joinder
`CERTIFICATE OF SERVICE
`The undersigned certifies that, in accordance with 37 C.F.R. § 42.6(e) and
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`37 C.F.R. § 42.105, service was made on Patent Owner as detailed below.
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`Date of service January 11, 2018
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`Manner of service FEDERAL EXPRESS
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`Documents served Petitioner’s Motion for Joinder Under 35 U.S.C. § 315(c), 37
`C.F.R. §§ 42.22, and 42.122(b)
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`Botos Churchill IP Law LLP (TNT IP LLC)
`430 Mountain Avenue, Suite 401
`New Providence, NJ 07974
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`
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`Elizabeth L. DeRieux (ederieux@capshawlaw.com)
`Edward J. DeFranco (eddefranco@quinnemanuel.com)
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`/David L. McCombs/
`David L. McCombs
`Lead Counsel for Petitioner
`Registration No. 32,271
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`Persons served per
`USPTO records
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`Also served by
`electronic mail on
`the attorneys of
`record for Plaintiff
`in the concurrent
`litigation matter
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