throbber
Attorney Docket No. 112868-0001-658
`
`IPR of U.S. Patent No. 7,915,631
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Attorney Docket No.:
`112868-0001-658
`
`Customer No.: 28120
`
`Petitioner: VIZIO, Inc.
`










`
`
`United States Patent No.: 7,915,631
`Inventors: Yoshinori Shimizu, et al.
`Formerly Application No.: 12/548,618
`Issue Date: March 29, 2011
`Filing Date: August 27, 2009
`Former Group Art Unit: 2822
`Former Examiner: Michael Trinh
`
`
`
`
`
`
`LIGHT EMITTING DEVICE AND DISPLAY
`
`For:
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b) AND
`REQUEST FOR SHORTENED RESPONSE TIME FOR
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`

`

`I.
`II.
`III.
`
` Attorney Docket No. 112868-0001-658
`
`IPR of U.S. Patent No. 7,915,631
`TABLE OF CONTENTS
`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 1
`STATEMENT OF MATERIAL FACTS ........................................................ 2
`JOINDER IS APPROPRIATE BECAUSE IT WILL EFFICIENTLY
`RESOLVE THE VALIDITY OF THE CHALLENGED CLAIMS OF
`THE ’631 PATENT ......................................................................................... 4
`A.
`Legal Standard ....................................................................................... 4
`B.
`Petitioner’s Motion is Timely ............................................................... 5
`C.
`The Relevant Factors Weigh in Favor of Joinder ................................. 6
`IV. REQUEST FOR SHORTENED PRELIMINARY RESPONSE TIME ....... 10
`V.
`CONCLUSION .............................................................................................. 10
`
`
`
`
`
`
`
`
`

`

`
`
`
` Attorney Docket No. 112868-0001-658
`
`IPR of U.S. Patent No. 7,915,631
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Hyundai Motor Co. v. Am. Vehicular Sciences LLC,
`IPR2014-01543, Paper 11 (Oct. 24, 2014) ....................................................... 4, 8
`Kyocera Corp. v. Softview LLC,
`IPR2013-00004, Paper 15 (April 24, 2013) ......................................................... 5
`Motorola Mobility LLC v. Softview LLC,
`IPR2013-00256, Paper 10 (June 20, 2013) .......................................................... 9
`
`Olympus Corp. v. Papst Licensing GmbH & Co.
`IPR2017-01617, Paper 7 (Oct. 17, 2017) ............................................................. 5
`Samsung Elecs. Co., Ltd. v. Fujinomaki,
`IPR2017-01017, Paper 12 (May 26, 2017) ................................................... 6, 8, 9
`Sony Corp. v. Memory Integrity, LLC,
`IPR2015-01353, Paper 11 (Oct. 5, 2015) ............................................................. 6
`STMicroelectronics, Inc. v. Lone Star Silicon Innovations, LLC,
`IPR2018-00435, Paper 7 (May 4, 2018) ........................................................... 8, 9
`Statutes
`35 U.S.C. § 315(c) ................................................................................................. 1, 4
`Other Authorities
`37 C.F.R. § 42.1(b) .................................................................................................... 4
`37 C.F.R. § 42.22 ....................................................................................................... 5
`37 C.F.R. § 42.122(b) ........................................................................................ 1, 4, 5
`
`
`
`
`-ii-
`
`

`

`
`
`I.
`
` Attorney Docket No. 112868-0001-658
`
`IPR of U.S. Patent No. 7,915,631
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`VIZIO, Inc. (“Petitioner”) respectfully requests joinder pursuant to 35
`
`U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) of any proceeding resulting from the
`
`concurrently filed Petition for inter partes review (the “Petition” for “IPR”) of
`
`claims 1-2 and 6-11 of U.S. Patent No. 7,915,631 (“the ’631 patent”) with recently
`
`instituted IPR2018-00066 naming Lowe’s, Companies, Inc., Lowe’s Home
`
`Centers, LLC, and L G Sourcing, INC. (collectively, “Lowe’s Petitioners”) as the
`
`petitioners (the “Lowe’s IPR”).1
`
`This motion should be granted because it is timely filed less than one month
`
`after institution of the Lowe’s IPR, and because each of the factors considered by
`
`the Board strongly favors joinder. The Petition is a carbon copy of the original
`
`Lowe’s IPR petition in all material respects. The concurrently filed Petition and
`
`the Lowe’s IPR petition challenge the same claims of the ’631 patent on the same
`
`grounds relying on the same prior art and evidence, including the same expert
`
`testimony. Moreover, absent termination of the Lowe’s Petitioners as parties to the
`
`proceeding, Petitioner agrees to take an “understudy” role as petitioners in
`
`similarly joined proceedings have taken. By doing so, Petitioner’s limited
`
`participation will not impact the timeline of the Lowe’s IPR. The Board routinely
`
`grants joinder under these circumstances.
`
`
`1 Lowe’s Petitioners do not oppose this motion for joinder.
`
`
`
`1
`
`

`

`
`
`
` Attorney Docket No. 112868-0001-658
`
`IPR of U.S. Patent No. 7,915,631
`In conjunction with this motion, Petitioner respectfully requests that the
`
`Board specify a shortened period of at most four (4) weeks (to June 13, 2018) in
`
`which PO may file a Preliminary Response to this new Petition.2 Given the
`
`identity of issues presented by this Petition and those raised by the Lowe’s IPR, the
`
`proposal for a shortened response period does not impose an undue burden on PO.
`
`If the Board declines to establish the proposed shortened response period for the
`
`Preliminary Response, Petitioner nevertheless maintains its motion for joinder.
`
`II.
`1.
`
`STATEMENT OF MATERIAL FACTS
`On March 23, 2016, PO filed a complaint alleging that Petitioner infringes,
`
`inter alia, claims 1 and 4 of the ’631 patent. See Nichia Corp. v. VIZIO, Inc., No.
`
`16-cv-00545 (C.D. Cal.). PO subsequently served infringement contentions
`
`alleging that Petitioner infringes claims 1, 2, 4, and 6-11 of the ’631 patent.
`
`
`2 Petitioner requests a shortened time period for PO to file a preliminary response
`
`prior to termination of the Lowe’s IPR in view of PO and Lowe’s Petitioners’
`
`recent notice to the district court that they have agreed in principle to settlement
`
`and requested a 30-day stay pending finalization of the parties’ settlement
`
`agreement. Nichia Corp. v. VIZIO, Inc., No. 16-cv-00545, Dkt. No. 62 at 1 (C.D.
`
`Cal. May 15, 2018). Petitioner will request a call with the Board to discuss
`
`scheduling for this proceeding and the Lowe’s IPR.
`
`
`
`2
`
`

`

`
`
`2.
`
` Attorney Docket No. 112868-0001-658
`
`IPR of U.S. Patent No. 7,915,631
`On July 19, 2016, PO filed lawsuits against Lowe’s Petitioners and Mary
`
`Elle Fashions, Inc. for infringement of, inter alia, the ’631 patent. See Nichia
`
`Corporation v. Lowe's Companies, Inc. et al., No. 5-16-cv-00142 (N.C.W.D.);
`
`Nichia Corp. v. Mary Elle Fashions, Inc. d/b/a/ Meridian Elec. et al., No. 4-16-cv-
`
`01176 (E.D. Mo.).
`
`3.
`
`On August 8, 2016, PO filed a lawsuit against TCL alleging infringement of,
`
`inter alia, the ’631 patent. See Nichia Corp. v. TCL Multimedia Tech. Holdings,
`
`Ltd., No. 16-cv-00681 (D. Del.).
`
`4.
`
`On December 30, 2016, Petitioner VIZIO, Inc. filed a petition for IPR
`
`challenging claims 1-4, 7-8, and 10-11 of the ’631 patent, and the Board denied
`
`institution. IPR2017-00551, Paps. 2, 9.
`
`5.
`
`On August 25, 2017, TCL Multimedia Technology Holdings Limited and
`
`TTE Technology, Inc. filed a petition for IPR challenging claims 1-2, 4, and 6-11
`
`of the ’631 patent, and the proceeding was terminated pursuant to settlement before
`
`institution. IPR2017-02000, Paps. 2, 12.
`
`6.
`
`On October 12, 2017, Lowe’s Petitioners filed a petition for IPR challenging
`
`claims 1-2 and 6-11 of the ’631 patent, and the Board granted institution on April
`
`25, 2018. IPR2018-00066, Paps. 1, 7.
`
`7.
`
`The Petition in the instant case is a copy of the Lowe’s IPR petition in all
`
`material respects, challenging the same claims using the same grounds, and
`
`
`
`3
`
`

`

` Attorney Docket No. 112868-0001-658
`
`
`IPR of U.S. Patent No. 7,915,631
`
`including the same prior art analysis and expert testimony.
`
`III. JOINDER IS APPROPRIATE BECAUSE IT WILL
`EFFICIENTLY RESOLVE THE VALIDITY OF THE
`CHALLENGED CLAIMS OF THE ’631 PATENT
`A. Legal Standard
`The Board has authority to join as a party to an instituted IPR any person
`
`who properly files a petition for IPR. 35 U.S.C. § 315(c). A request for joinder
`
`must be filed “no later than one month after the institution date of any inter partes
`
`review for which joinder is requested.” 37 C.F.R. § 42.122(b).
`
`Joinder is appropriate when it results in the just, speedy, and inexpensive
`
`resolution of proceedings. 37 C.F.R. § 42.1(b). Joinder is particularly appropriate
`
`when a later petitioner presents the identical grounds of unpatentability as an earlier
`
`petitioner. 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 inter
`
`partes review 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.”) (emphasis added). See, e.g., Hyundai Motor
`
`Co. v. Am. Vehicular Sciences LLC, IPR2014-01543, Pap. 11 at 4 (Oct. 24, 2014)
`
`(granting motion wherein impact of joinder “will be minimal” and “joinder will
`
`enhance efficiency, avoid duplication of efforts, and reduce the potential of
`
`inconsistency among proceedings”).
`
`
`
`4
`
`

`

`
`
`
` Attorney Docket No. 112868-0001-658
`
`IPR of U.S. Patent No. 7,915,631
`The Board has identified a Representative Order, IPR2013-00004 Paper 15,
`
`regarding motions for joinder, which directs a movant to: (1) “explain the reasons
`
`why joinder is appropriate,” (2) “identify any new ground of unpatentability being
`
`raised” in the petition, (3) explain how the impact on the schedule and costs of the
`
`current proceedings will be minimized, and (4) “specifically address how briefing
`
`and/or discovery may be simplified to minimize schedule impact.” Kyocera Corp.
`
`v. Softview LLC, IPR2013-00004, Pap. 15 at 4 (Apr. 24, 2013). Analysis of these
`
`factors here warrants the Board’s use of its discretion to grant the requested
`
`joinder.
`
`B.
`Petitioner’s Motion is Timely
`Petitioner’s Motion is timely under 37 C.F.R. §§ 42.22 and 42.122(b)
`
`because it is filed no later than one month after the institution date of the Lowe’s
`
`IPR. The Board instituted the Lowe’s IPR on April 25, 2018 (IPR2018-00066,
`
`Pap. 7), and this motion is filed only three weeks later. The Board routinely
`
`determines that joinder requests filed prior to one month after institution, like
`
`Petitioner’s, are timely. See, e.g., Olympus Corp. v. Papst Licensing GmbH & Co.
`
`KG, IPR2017-01617, Pap. 7 at 3 (Oct. 17, 2017) (finding a motion for joinder was
`
`“timely” when filed prior to one month after institution of the proceeding to which
`
`the petitioner sought joinder).
`
`
`
`5
`
`

`

`
`
`
` Attorney Docket No. 112868-0001-658
`
`IPR of U.S. Patent No. 7,915,631
`C. The Relevant Factors Weigh in Favor of Joinder
`Each of the four factors considered by the Board weighs in favor of joinder.
`
`As discussed below, granting joinder will not enlarge the scope of the Lowe’s IPR
`
`and will not negatively impact the Lowe’s IPR schedule, but a decision denying
`
`joinder could severely prejudice VIZIO. Thus, joinder is appropriate and should
`
`be granted.
`
`1.
`
`Joinder is Appropriate Because the Petitions are
`Substantively Identical
`Joinder is appropriate because the Petition and the Lowe’s IPR petition are
`
`substantively identical, and PO and Lowe’s Petitioners will not be prejudiced if
`
`joinder is granted. The Petition is limited to the same claims, grounds, and prior
`
`art raised in the Lowe’s IPR petition. Moreover, both petitions rely upon the same
`
`expert declaration of Dr. Eric Bretschneider. Ex. 1003 (in both cases). This
`
`strongly supports application of joinder.
`
`Moreover, if joined, Petitioner agrees to take an “understudy” role as
`
`petitioners in other similarly joined proceedings have taken. See, e.g., Samsung
`
`Elecs. Co., Ltd. v. Fujinomaki, IPR2017-01017, Pap. 12 at 5 (May 26, 2017)
`
`(granting institution and joinder where petitioner requested an “understudy role”);
`
`Sony Corp. v. Memory Integrity, LLC, IPR2015-01353, Pap. 11 at 6 (Oct. 5, 2015)
`
`(same). Petitioner would remain in that role until and unless Lowe’s is dismissed
`
`from the proceedings or elects to transfer control to Petitioner, as may occur during
`
`
`
`6
`
`

`

` Attorney Docket No. 112868-0001-658
`
`
`IPR of U.S. Patent No. 7,915,631
`
`advanced settlement negotiations. In either event, Petitioner intends to “step into
`
`the shoes” of the Lowe’s Petitioners and continue to prosecute the joined
`
`proceedings.
`
`Additionally, joinder will promote the efficient determination of validity of
`
`the challenged claims of the ’631 patent. For example, a final written decision on
`
`the validity of the ’631 patent has the potential to minimize issues in the
`
`underlying litigations. Absent joinder, if PO and the Lowe’s Petitioners settle and
`
`move to terminate the Lowe’s IPR proceeding, the PTAB and/or a district court
`
`may be forced to re-adjudicate the same issues on which the Lowe’s Petitioners
`
`have already shown they are reasonably likely to prevail, which would be a waste
`
`of judicial resources.
`
`
`
`Moreover, granting joinder will not prejudice PO or the Lowe’s Petitioners,
`
`while Petitioner could be substantially prejudiced if joinder is denied. The Petition
`
`is substantively identical to the Lowe’s IPR petition and does not raise any new
`
`grounds. Accordingly, PO will not be forced to respond to new prior art or
`
`arguments, and should incur little to no additional cost. In addition, since the
`
`Board only recently issued its institution decision in the Lowe’s IPR on April 25,
`
`2018, joinder should not significantly affect the timing of the Lowe’s IPR. On the
`
`other hand, Petitioner may be prejudiced if joinder is denied. For example, PO and
`
`Lowe’s Petitioners could settle and move to terminate the Lowe’s IPR proceeding.
`
`
`
`7
`
`

`

`
`
`
` Attorney Docket No. 112868-0001-658
`
`IPR of U.S. Patent No. 7,915,631
`No New Grounds Are Presented
`The Petition does not present any new ground of unpatentability. As
`
`2.
`
`mentioned above, the Petition presents only the grounds raised in the Lowe’s IPR,
`
`and is based on the same analysis and expert testimony submitted by the Lowe’s
`
`Petitioners. This strongly favors joinder. See, e.g., STMicroelectronics, Inc. v.
`
`Lone Star Silicon Innovations, LLC, IPR2018-00435, Pap. 7 at 4-5 (May 4, 2018)
`
`(granting joinder where petitioner’s grounds and arguments are identical);
`
`Samsung, IPR2017-01017, Pap. 12 at 4-5 (“Nevertheless, we ‘routinely grant[]
`
`motions for joinder where the party seeking joinder introduces identical arguments
`
`and the same grounds raised in the existing proceeding.’”) (emphasis and alteration
`
`in original); see also Hyundai, IPR2014-01543, Pap. 11 at 2-4.
`
`3.
`
`Joinder Will Not Negatively Impact the Lowe’s IPR Trial
`Schedule or Costs for the Existing Review
`Joinder should have no impact on the trial schedule and minimal to no
`
`impact on costs for the existing review due to the substantively identical subject
`
`matter and the early stage of the Lowe’s IPR proceeding (IPR2018-00066). The
`
`Petition is being filed less than a month after the institution of the Lowe’s IPR. It
`
`copies the grounds, prior art analysis, and expert testimony provided in the Lowe’s
`
`IPR petition, so there are no new validity issues for PO to address. Given these
`
`circumstances, Petitioner has included in this motion a request for a shortened
`
`response time for PO’s Preliminary Response in this proceeding. The Board may
`
`
`
`8
`
`

`

` Attorney Docket No. 112868-0001-658
`
`
`IPR of U.S. Patent No. 7,915,631
`
`thereafter be in a position to expeditiously resolve the question of institution.
`
`Thus, the Board need not alter the schedule already set in the Lowe’s IPR, and can
`
`issue a final written decision in a timely manner.
`
`Moreover, as noted above, if joinder is granted, Petitioner has agreed to take
`
`an “understudy” role in the proceeding. Accordingly, Petitioner does not believe
`
`that any extension of the schedule will be required by virtue of joinder of VIZIO as
`
`a petitioner to the Lowe’s IPR proceeding, and there will be minimal if any
`
`additional costs. Under these provisions, this factor strongly favors joinder.
`
`4.
`
`Discovery and Briefing Can Be Simplified
`Given that the Petition is identical to the Lowe’s IPR petition with respect to
`
`the grounds of unpatentability raised in the Lowe’s IPR petition, joining the
`
`proceedings will allow for common briefing and discovery. The Board has
`
`favorably and routinely cited such procedures in granting joinder of IPR
`
`proceedings. See, e.g., STMicroelectronics, IPR2018-00435, Pap. 7 at 4; Samsung,
`
`IPR2017-01017, Pap. 12 at 6; Motorola Mobility LLC v. Softview LLC, IPR2013-
`
`00256, Pap. 10 at 9 (June 20, 2013).
`
`Specifically, Petitioner agrees to cooperate and confer with Lowe’s when
`
`filing any papers, and would only assume the primary role if Lowe’s Petitioners
`
`ceases to be a party to the proceedings or turns control over to Petitioner.
`
`Additionally, Petitioner agrees that all filings will be consolidated with Lowe’s
`
`
`
`9
`
`

`

` Attorney Docket No. 112868-0001-658
`
`
`IPR of U.S. Patent No. 7,915,631
`
`Petitioners and subject to the page limits applicable for a single party. Petitioners
`
`will not introduce any argument or discovery not introduced by Lowe’s Petitioners,
`
`and will not request additional depositions or deposition time. Since Petitioner and
`
`Lowe’s Petitioners rely on the same expert declaration, Petitioner agrees to a single
`
`deposition for Petitioner’s expert and a single deposition for PO’s expert.
`
`Moreover, Petitioner agrees to a single hearing, subject to the time limits for a
`
`single party. These procedures will simplify briefing and minimize the burden on
`
`the parties as well as the Board. Accordingly, this factor weighs in favor of joinder.
`
`IV. REQUEST FOR SHORTENED PRELIMINARY RESPONSE TIME
`Petitioner respectfully requests that the Board specify a shortened period of
`
`at most four (4) weeks (to June 13, 2018) for PO to file a Preliminary Response to
`
`the Petition. Since the issues presented by this Petition and the Lowe’s IPR are
`
`identical, PO will not be burdened by a shortened response period. Moreover,
`
`because this petition is substantively identical to IPR2018-00666, Petitioner
`
`respectfully submits the Board may be in a position to resolve the question of
`
`institution expeditiously after PO’s Preliminary Response, should PO choose to
`
`submit one.
`
`V. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the grounds in
`
`the accompanying Petition for IPR of the ’631 patent be instituted, and that the
`
`
`
`10
`
`

`

` Attorney Docket No. 112868-0001-658
`
`
`IPR of U.S. Patent No. 7,915,631
`
`Board grant this Motion for Joinder to join this proceeding with IPR2018-00066.
`
`In addition, Petitioner respectfully requests a shortened response period (to June
`
`13, 2018) for a Patent Owner Preliminary Response.
`
`Dated: May 16, 2018
`
`Respectfully submitted,
`
`By: /Gabrielle E. Higgins/
`
`
`Gabrielle E. Higgins
`Reg. No. 38,916
`ROPES & GRAY LLP
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303
`gabrielle.higgins@ropesgray.com
`Attorney for Petitioner
`
`
`
`Mailing address for all PTAB
`correspondence:
`ROPES & GRAY LLP,
`IPRM – Floor 43
`Prudential Tower
`800 Boylston Street
`Boston, MA 02199-3600
`
`
`
`11
`
`

`

`
`
`
` Attorney Docket No. 112868-0001-658
`
`IPR of U.S. Patent No. 7,915,631
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing MOTION FOR
`
`JOINDER UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`AND REQUEST FOR SHORTENED RESPONSE TIME FOR PATENT
`
`OWNER’S PRELIMINARY RESPONSE has been served by U.S. Express Mail
`
`on Patent Owner indicated for U.S. Patent No. 7,915,631 through the following
`
`correspondence address of record:
`
`Correspondence Address: Andrew D. Meikle
`BIRCH STEWART KOLASCH & BIRCH, LLP
`8110 Gatehouse Road
`Suite 100 East
`FALLS CHURCH VA 22042-1248
`
`
`
`
`Dated: May 16, 2018
`
`
`
`Express Mail Label No. EF175142022 US
`
`Catherine Nyarady
`PAUL, WEISS, RIFKIND, WHARTON &
`GARRISON LLP
`1285 Avenue of the Americas
`New York, NY 10019
`
`Express Mail Label No. EF 175142075 US
`
`
`Respectfully submitted,
`
`ROPES & GRAY LLP
`
`By: /Crena Pacheco/
`Name: Crena Pacheco
`
`
`

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