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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
`Patent No. 8,624,550
`___________________
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`PATENT OWNER’S OPPOSITION
`TO PETITIONERS' JOINDER MOTION
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`10442258
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`Patent Owner Fundamental Innovation Systems International LLC
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`("Fundamental") opposes the motion for joinder filed by LG Electronics, Inc.,
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`LG Electronics U.S.A. Inc., LG Electronics Mobilecomm U.S.A. Inc., LG
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`Electronics Mobile Research U.S.A. LLC, and LG Electronics Alabama, Inc.
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`(collectively “LG” or “Petitioners”). In particular, no trial has been instituted
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`in IPR2018-00110, the proceeding that LG now seeks to join. LG's motion is
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`therefore premature and its request that the Board considers its joinder motion
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`before deciding whether to terminate IPR2018-00110 (should Petitioners in
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`IPR2018-00110 so request) contradicts the Board's prior rulings. E.g., Fifth
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`Third Bank v. Stambler, IPR2014-00244, Paper 4 (PTAB, Dec. 17, 2003)
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`(denying motion to join a proceeding that is terminated before trial was
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`instituted); Amneal Pharmaceuticals LLC v. Hospira, Inc., IPR2017-01054,
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`Paper 9 (PTAB, Sept. 6, 2017) (terminating original IPRs before deciding the
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`joinder's motion even though the motion was filed after institution and 2.5
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`months before the termination decision).
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`Additionally, although LG alleges that its petition is substantively
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`similar to the IPR2018-00110 petition, LG petition would add significant
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`complexity. For example, LG admits at least five entities are real parties in
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`interest in its petitions, but given LG's opaque and complicated corporate
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`structures, discovery will be needed to determine whether LG has named all
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`the entities along the corporate chains between and among those parties.
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`IPR2018-00460
`US 8,624,550
`Amazon.com, Inc. v. Appistry, Inc., IPR2015-00480 paper no. 18 (PTAB Jul.
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`13, 2015) (failing to name two entities on the corporate chain between Amazon
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`and AWS constitutes a failure to name all real parties in interest). Adding LG
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`will therefore require significant discovery. Unified Patents Inc. v. C-Cation
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`Technologies, LLC, IRP2015-01045, Paper 15 (PTAB, Oct. 7, 2015) (denying
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`joinder motion because "the real party-in-interest issue potentially could
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`sidetrack the joined proceeding, shifting the focus away from the substantive
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`issue to be addressed). Furthermore, adding LG would require Patent Owner to
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`coordinate with three different sets of attorneys for conference calls, discovery
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`and depositions, making things inherently more complicated.
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`For at least the above reasons, LG's motion for joinder should be denied.
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`I.
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`Legal Standards
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`Pursuant to 35 U.S.C. § 315(c), the Board has the discretion, but not the
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`obligation, to grant a joinder motion. As LG concedes, it bears "the burden of
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`proof and should: (1) set forth the reasons why joinder is appropriate; (2)
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`identify any new grounds of unpatentability asserted in the petition; (3) explain
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`what impact (if any) joinder would have on the trial schedule for the existing
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`review; and (4) address specifically how briefing and discovery may be
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`simplified." Mot. 3.
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`The Board's past decisions on joinder motions make clear that a joinder
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`motion should be denied when "there is no pending proceeding for Petitioner to
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`IPR2018-00460
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`join." Amneal Pharms. LLC v. Hospira, Inc., IPR2017-01054, Paper 9 (PTAB,
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`Sep. 6, 2017) (denying Fresenius' joinder motion as moot because the IPR it
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`seeks to join has terminated after institution). The Board also makes clear that
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`even when the patentability grounds are allegedly substantively the same, other
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`issues, such as real parties-in-interest, may justify denying a joinder motion
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`because granting the motion "could complicate, rather than simplify, briefing
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`and discovery in the" original IPR. Unified Patents Inc. v. C-Cation
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`Technologies, LLC, IRP2015-01045, Paper 15 at 7 (PTAB, Oct. 7, 2015).
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`Moreover, when more than one party is already involved in a proceeding, such
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`as in this case where ZTE and Samsung jointly filed the petition, the need for
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`an additional "understudy" is lessened. Id.
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`II. LG's Joinder Motion Should Be Denied
`A. LG's Joinder Motion Is Premature
`LG admits that its motion was "filed before a decision on institution of
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`the ZTE/Samsung IPR." Mot. 2. In the ZTE/Samsung IPR, the patent owner's
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`preliminary response is not due until February 13, 2018, and the Board's
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`decision is not due until May 13, 2018. Thus, there will be no instituted
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`proceedings for LG to join for another three months. LG's motion is therefore
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`premature.
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`IPR2018-00460
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`B.
`The Board Should Not Grant LG's Request That Its Motion
`Be Decided Before the Board Determines Whether to
`Terminate the ZTE/Samsung IPR
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`LG requests that "if ZTE/Samsung moves to terminate the
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`ZTE/Samsung IPR and is dismissed before the Board decides this Motion for
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`Joinder, LGE respectfully requests that the Board exercise its discretion and
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`decline to terminate the Patent Owner at least until the Board considers this
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`motion." Mot. 4-5. LG cites no authority for this request. To the contrary, the
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`Board has denied similar requests in the past. In Fifth Third Bank v. Stambler,
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`IPR2014-00244, Paper 4 (PTAB, Dec. 17, 2003), Fifth Third Bank attempted
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`to join IPR2013-00341 when the original petitioner and the patent owner were
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`discussing settlement. The Board subsequently terminated IPR2013-00341 and
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`denied Fifth Third Party's joinder motion as a result. Id.
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`Similarly, in Amneal Pharmaceuticals LLC v. Hospira, Inc., IPR2017-
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`01054, Paper 9 (PTAB, Sept. 6, 2017), Fresenius Kabi USB, LLC filed a
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`motion to join the proceeding. Fresenius filed its motion on March 8, 2017,
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`within one month that the Board instituted the underlying inter partes
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`proceeding. The Board terminated the underlying proceeding on May 19,
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`2017. See IPR2016-01577, Paper 19 (PTAB, May 19, 2017). Thereafter, on
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`September 6, 2017, the Board denied Fresenius' motion as moot.
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` Hence, there is no reason for the Board to base its termination decisions
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`on LG's pending motion. Had LG really wanted to join the proceeding, it
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`could have jointly filed the petition with ZTE and Samsung, with whom it has
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`been closely collaborating in the district court litigation. Indeed, LG's
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`invalidity contentions in most parts mirror that of Samsung's; and LG gave no
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`reason why it did not join ZTE and Samsung in the filing.
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`C. LG's "Understudy" Role is Redundant and Adds Complexity
` LG admits that the underlying IPR is filed jointly by ZTE and Samsung.
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`Hence, if IPR is initiated, the proceeding will continue even if there is a
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`settlement with one party. LG does not explain what additional value its
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`involvement would add to the proceeding.
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`In contrast, LG's involvement would add complexity to the underlying
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`matter. Although LG represents that it is merely playing an "understudy" role,
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`it admits that it would like to participate in all the conference calls, discovery
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`and depositions. Mot. 6 n. 1. Hence, at a minimum, Patent Owner would have
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`to coordinate with three—instead of two—sets of attorneys and each additional
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`party can make coordination and scheduling exponentially more difficult.
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`Moreover, under the order that LG proposed, it appears that its counsel will
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`have the ability to participate in direct, cross-examination and redirect, as long
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`as the total time used by ZTE, Samsung and LG does not exceed that permitted
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`under the regulation. Mot. 7. Hence, Fundamental's witnesses apparently can
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`be examined by three sets of attorneys, a tactic that often results in repetitive
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`and harassing depositions.
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`Moreover, Fundamental questions whether LG has named all the real
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`parties-in-interest in its corporate chains that direct or control the activities of
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`LG Electronics U.S.A. Inc., LG Electronics Mobilecomm U.S.A. Inc., LG
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`Electronics Mobile Research U.S.A. LLC, and LG Electronics Alabama, Inc.
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`Hence, discovery may be necessary on these real parties-in-interest issues.
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`This issue "potentially could sidetrack the joined proceeding, shifting the focus
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`away from the substantive issue to be addressed." Unified Patents Inc. v. C-
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`Cation Technologies, LLC, IRP2015-01045, Paper 15 (PTAB, Oct. 7, 2015).
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`Hence, contrary to LG's representation, LG's involvement adds complexity to
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`the underlying proceeding.
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`D. The Effect of Joining LG on the Schedule in the Underlying
`Proceeding is Uncertain
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`As already noted, no trial has been instituted and no scheduling order has
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`been issued. Although LG asserts that it will adhere to all applicable deadlines,
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`it makes no promise that it will not cause delay in scheduling depositions,
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`discovery or conference calls due to its counsel's alleged unavailability or
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`conflicts. Nor does it promise that existing parties may disregard its counsel's
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`availability for scheduling or coordination purposes.
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`Furthermore, it is unclear when LG intends to "step into the shoes" of the
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`dismissed petitioner. For example, if only one of ZTE and Samsung is
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`dismissed, will LG remain as an understudy or does it intend to take over? LG
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`does not say.
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`Moreover, as noted above, joining LG will require additional discovery
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`into LG's real parties-in-interest issue. This will distract Fundamental and the
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`Board from the substantive issues of patentability.
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`Furthermore, LG filed its petition two and a half months later than ZTE
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`and Samsung. The patent owner's preliminary response in LG-filed petition is
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`not due until April 18, 2018 and the Board's institution decision is not due until
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`July 18, 2018. Hence, joining LG could disrupt the schedule of IPR2018-
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`00110 if it is every instituted.
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`LG's Involvement Prejudices Fundamental
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`E.
`Contrary to LG's assertion, Fundamental will have to expend additional
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`resources above and beyond those required in the current ZTE/Samsung IPR,
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`e.g., to conduct discovery into the real parties-in-interest issue. Moreover, after
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`joining LG, Fundamental may need to devote pages to address the RPI issue
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`unique to LG and hence have fewer space to address the more substantive
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`patentability issues.
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`III. Conclusion
`For above reasons, LG's motion for joinder should be denied.
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`Dated: February 12, 2018
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`10442258
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`Respectfully submitted,
`By: /s/ Hong Zhong
` H. Annita Zhong. (Reg. No. 66,530)
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`CERTIFICATE OF SERVICE
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`I hereby certify, pursuant to 37 C.F.R. sections 42.6, that on
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`February 12, 2018, a complete copy of the foregoing document was served
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`upon the following, by ELECTRONIC MAIL:
`
`David L. McCombs
`david.mccombs.ipr@haynesboone.com
`Gregory P. Huh
`gregory.huh.ipr@haynesboone.com
`David M. O'Dell
`david.odell.ipr@haynesboone.com
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`HAYNES AND BOONE, LLP
`2323 Victory Ave., Ste. 700
`Dallas, TX 75219
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`
` /Susan M. Langworthy/
` Susan M. Langworthy
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`10442258
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