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`IPR of U.S. Patent No. 7,915,631
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Attorney Docket No.:
`112868-0001-658
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`Customer No.: 28120
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`Petitioner: VIZIO, Inc.
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`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
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`LIGHT EMITTING DEVICE AND DISPLAY
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`For:
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`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
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`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
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`I.
`II.
`III.
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` Attorney Docket No. 112868-0001-658
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`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
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` Attorney Docket No. 112868-0001-658
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`IPR of U.S. Patent No. 7,915,631
`TABLE OF AUTHORITIES
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` Page(s)
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`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
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`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
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`I.
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` Attorney Docket No. 112868-0001-658
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`IPR of U.S. Patent No. 7,915,631
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`VIZIO, Inc. (“Petitioner”) respectfully requests joinder pursuant to 35
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`U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) of any proceeding resulting from the
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`concurrently filed Petition for inter partes review (the “Petition” for “IPR”) of
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`claims 1-2 and 6-11 of U.S. Patent No. 7,915,631 (“the ’631 patent”) with recently
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`instituted IPR2018-00066 naming Lowe’s, Companies, Inc., Lowe’s Home
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`Centers, LLC, and L G Sourcing, INC. (collectively, “Lowe’s Petitioners”) as the
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`petitioners (the “Lowe’s IPR”).1
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`This motion should be granted because it is timely filed less than one month
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`after institution of the Lowe’s IPR, and because each of the factors considered by
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`the Board strongly favors joinder. The Petition is a carbon copy of the original
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`Lowe’s IPR petition in all material respects. The concurrently filed Petition and
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`the Lowe’s IPR petition challenge the same claims of the ’631 patent on the same
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`grounds relying on the same prior art and evidence, including the same expert
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`testimony. Moreover, absent termination of the Lowe’s Petitioners as parties to the
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`proceeding, Petitioner agrees to take an “understudy” role as petitioners in
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`similarly joined proceedings have taken. By doing so, Petitioner’s limited
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`participation will not impact the timeline of the Lowe’s IPR. The Board routinely
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`grants joinder under these circumstances.
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`1 Lowe’s Petitioners do not oppose this motion for joinder.
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`IPR of U.S. Patent No. 7,915,631
`In conjunction with this motion, Petitioner respectfully requests that the
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`Board specify a shortened period of at most four (4) weeks (to June 13, 2018) in
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`which PO may file a Preliminary Response to this new Petition.2 Given the
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`identity of issues presented by this Petition and those raised by the Lowe’s IPR, the
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`proposal for a shortened response period does not impose an undue burden on PO.
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`If the Board declines to establish the proposed shortened response period for the
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`Preliminary Response, Petitioner nevertheless maintains its motion for joinder.
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`II.
`1.
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`STATEMENT OF MATERIAL FACTS
`On March 23, 2016, PO filed a complaint alleging that Petitioner infringes,
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`inter alia, claims 1 and 4 of the ’631 patent. See Nichia Corp. v. VIZIO, Inc., No.
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`16-cv-00545 (C.D. Cal.). PO subsequently served infringement contentions
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`alleging that Petitioner infringes claims 1, 2, 4, and 6-11 of the ’631 patent.
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`2 Petitioner requests a shortened time period for PO to file a preliminary response
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`prior to termination of the Lowe’s IPR in view of PO and Lowe’s Petitioners’
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`recent notice to the district court that they have agreed in principle to settlement
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`and requested a 30-day stay pending finalization of the parties’ settlement
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`agreement. Nichia Corp. v. VIZIO, Inc., No. 16-cv-00545, Dkt. No. 62 at 1 (C.D.
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`Cal. May 15, 2018). Petitioner will request a call with the Board to discuss
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`scheduling for this proceeding and the Lowe’s IPR.
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`2.
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`IPR of U.S. Patent No. 7,915,631
`On July 19, 2016, PO filed lawsuits against Lowe’s Petitioners and Mary
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`Elle Fashions, Inc. for infringement of, inter alia, the ’631 patent. See Nichia
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`Corporation v. Lowe's Companies, Inc. et al., No. 5-16-cv-00142 (N.C.W.D.);
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`Nichia Corp. v. Mary Elle Fashions, Inc. d/b/a/ Meridian Elec. et al., No. 4-16-cv-
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`01176 (E.D. Mo.).
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`3.
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`On August 8, 2016, PO filed a lawsuit against TCL alleging infringement of,
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`inter alia, the ’631 patent. See Nichia Corp. v. TCL Multimedia Tech. Holdings,
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`Ltd., No. 16-cv-00681 (D. Del.).
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`4.
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`On December 30, 2016, Petitioner VIZIO, Inc. filed a petition for IPR
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`challenging claims 1-4, 7-8, and 10-11 of the ’631 patent, and the Board denied
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`institution. IPR2017-00551, Paps. 2, 9.
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`5.
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`On August 25, 2017, TCL Multimedia Technology Holdings Limited and
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`TTE Technology, Inc. filed a petition for IPR challenging claims 1-2, 4, and 6-11
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`of the ’631 patent, and the proceeding was terminated pursuant to settlement before
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`institution. IPR2017-02000, Paps. 2, 12.
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`6.
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`On October 12, 2017, Lowe’s Petitioners filed a petition for IPR challenging
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`claims 1-2 and 6-11 of the ’631 patent, and the Board granted institution on April
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`25, 2018. IPR2018-00066, Paps. 1, 7.
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`7.
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`The Petition in the instant case is a copy of the Lowe’s IPR petition in all
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`material respects, challenging the same claims using the same grounds, and
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`including the same prior art analysis and expert testimony.
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`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
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`who properly files a petition for IPR. 35 U.S.C. § 315(c). A request for joinder
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`must be filed “no later than one month after the institution date of any inter partes
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`review for which joinder is requested.” 37 C.F.R. § 42.122(b).
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`Joinder is appropriate when it results in the just, speedy, and inexpensive
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`resolution of proceedings. 37 C.F.R. § 42.1(b). Joinder is particularly appropriate
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`when a later petitioner presents the identical grounds of unpatentability as an earlier
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`petitioner. See 157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen.
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`Kyl) (“The Office anticipates that joinder will be allowed as of right - if an inter
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`partes review is instituted on the basis of a petition, for example, a party that files an
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`identical petition will be joined to that proceeding, and thus allowed to file its own
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`briefs and make its own arguments.”) (emphasis added). See, e.g., Hyundai Motor
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`Co. v. Am. Vehicular Sciences LLC, IPR2014-01543, Pap. 11 at 4 (Oct. 24, 2014)
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`(granting motion wherein impact of joinder “will be minimal” and “joinder will
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`enhance efficiency, avoid duplication of efforts, and reduce the potential of
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`inconsistency among proceedings”).
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`IPR of U.S. Patent No. 7,915,631
`The Board has identified a Representative Order, IPR2013-00004 Paper 15,
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`regarding motions for joinder, which directs a movant to: (1) “explain the reasons
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`why joinder is appropriate,” (2) “identify any new ground of unpatentability being
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`raised” in the petition, (3) explain how the impact on the schedule and costs of the
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`current proceedings will be minimized, and (4) “specifically address how briefing
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`and/or discovery may be simplified to minimize schedule impact.” Kyocera Corp.
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`v. Softview LLC, IPR2013-00004, Pap. 15 at 4 (Apr. 24, 2013). Analysis of these
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`factors here warrants the Board’s use of its discretion to grant the requested
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`joinder.
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`B.
`Petitioner’s Motion is Timely
`Petitioner’s Motion is timely under 37 C.F.R. §§ 42.22 and 42.122(b)
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`because it is filed no later than one month after the institution date of the Lowe’s
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`IPR. The Board instituted the Lowe’s IPR on April 25, 2018 (IPR2018-00066,
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`Pap. 7), and this motion is filed only three weeks later. The Board routinely
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`determines that joinder requests filed prior to one month after institution, like
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`Petitioner’s, are timely. See, e.g., Olympus Corp. v. Papst Licensing GmbH & Co.
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`KG, IPR2017-01617, Pap. 7 at 3 (Oct. 17, 2017) (finding a motion for joinder was
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`“timely” when filed prior to one month after institution of the proceeding to which
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`the petitioner sought joinder).
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`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.
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`As discussed below, granting joinder will not enlarge the scope of the Lowe’s IPR
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`and will not negatively impact the Lowe’s IPR schedule, but a decision denying
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`joinder could severely prejudice VIZIO. Thus, joinder is appropriate and should
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`be granted.
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`1.
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`Joinder is Appropriate Because the Petitions are
`Substantively Identical
`Joinder is appropriate because the Petition and the Lowe’s IPR petition are
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`substantively identical, and PO and Lowe’s Petitioners will not be prejudiced if
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`joinder is granted. The Petition is limited to the same claims, grounds, and prior
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`art raised in the Lowe’s IPR petition. Moreover, both petitions rely upon the same
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`expert declaration of Dr. Eric Bretschneider. Ex. 1003 (in both cases). This
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`strongly supports application of joinder.
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`Moreover, if joined, Petitioner agrees to take an “understudy” role as
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`petitioners in other similarly joined proceedings have taken. See, e.g., Samsung
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`Elecs. Co., Ltd. v. Fujinomaki, IPR2017-01017, Pap. 12 at 5 (May 26, 2017)
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`(granting institution and joinder where petitioner requested an “understudy role”);
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`Sony Corp. v. Memory Integrity, LLC, IPR2015-01353, Pap. 11 at 6 (Oct. 5, 2015)
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`(same). Petitioner would remain in that role until and unless Lowe’s is dismissed
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`from the proceedings or elects to transfer control to Petitioner, as may occur during
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`IPR of U.S. Patent No. 7,915,631
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`advanced settlement negotiations. In either event, Petitioner intends to “step into
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`the shoes” of the Lowe’s Petitioners and continue to prosecute the joined
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`proceedings.
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`Additionally, joinder will promote the efficient determination of validity of
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`the challenged claims of the ’631 patent. For example, a final written decision on
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`the validity of the ’631 patent has the potential to minimize issues in the
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`underlying litigations. Absent joinder, if PO and the Lowe’s Petitioners settle and
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`move to terminate the Lowe’s IPR proceeding, the PTAB and/or a district court
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`may be forced to re-adjudicate the same issues on which the Lowe’s Petitioners
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`have already shown they are reasonably likely to prevail, which would be a waste
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`of judicial resources.
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`Moreover, granting joinder will not prejudice PO or the Lowe’s Petitioners,
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`while Petitioner could be substantially prejudiced if joinder is denied. The Petition
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`is substantively identical to the Lowe’s IPR petition and does not raise any new
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`grounds. Accordingly, PO will not be forced to respond to new prior art or
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`arguments, and should incur little to no additional cost. In addition, since the
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`Board only recently issued its institution decision in the Lowe’s IPR on April 25,
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`2018, joinder should not significantly affect the timing of the Lowe’s IPR. On the
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`other hand, Petitioner may be prejudiced if joinder is denied. For example, PO and
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`Lowe’s Petitioners could settle and move to terminate the Lowe’s IPR proceeding.
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`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
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`2.
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`mentioned above, the Petition presents only the grounds raised in the Lowe’s IPR,
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`and is based on the same analysis and expert testimony submitted by the Lowe’s
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`Petitioners. This strongly favors joinder. See, e.g., STMicroelectronics, Inc. v.
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`Lone Star Silicon Innovations, LLC, IPR2018-00435, Pap. 7 at 4-5 (May 4, 2018)
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`(granting joinder where petitioner’s grounds and arguments are identical);
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`Samsung, IPR2017-01017, Pap. 12 at 4-5 (“Nevertheless, we ‘routinely grant[]
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`motions for joinder where the party seeking joinder introduces identical arguments
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`and the same grounds raised in the existing proceeding.’”) (emphasis and alteration
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`in original); see also Hyundai, IPR2014-01543, Pap. 11 at 2-4.
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`3.
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`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
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`impact on costs for the existing review due to the substantively identical subject
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`matter and the early stage of the Lowe’s IPR proceeding (IPR2018-00066). The
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`Petition is being filed less than a month after the institution of the Lowe’s IPR. It
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`copies the grounds, prior art analysis, and expert testimony provided in the Lowe’s
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`IPR petition, so there are no new validity issues for PO to address. Given these
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`circumstances, Petitioner has included in this motion a request for a shortened
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`response time for PO’s Preliminary Response in this proceeding. The Board may
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`IPR of U.S. Patent No. 7,915,631
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`thereafter be in a position to expeditiously resolve the question of institution.
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`Thus, the Board need not alter the schedule already set in the Lowe’s IPR, and can
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`issue a final written decision in a timely manner.
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`Moreover, as noted above, if joinder is granted, Petitioner has agreed to take
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`an “understudy” role in the proceeding. Accordingly, Petitioner does not believe
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`that any extension of the schedule will be required by virtue of joinder of VIZIO as
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`a petitioner to the Lowe’s IPR proceeding, and there will be minimal if any
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`additional costs. Under these provisions, this factor strongly favors joinder.
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`4.
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`Discovery and Briefing Can Be Simplified
`Given that the Petition is identical to the Lowe’s IPR petition with respect to
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`the grounds of unpatentability raised in the Lowe’s IPR petition, joining the
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`proceedings will allow for common briefing and discovery. The Board has
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`favorably and routinely cited such procedures in granting joinder of IPR
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`proceedings. See, e.g., STMicroelectronics, IPR2018-00435, Pap. 7 at 4; Samsung,
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`IPR2017-01017, Pap. 12 at 6; Motorola Mobility LLC v. Softview LLC, IPR2013-
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`00256, Pap. 10 at 9 (June 20, 2013).
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`Specifically, Petitioner agrees to cooperate and confer with Lowe’s when
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`filing any papers, and would only assume the primary role if Lowe’s Petitioners
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`ceases to be a party to the proceedings or turns control over to Petitioner.
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`Additionally, Petitioner agrees that all filings will be consolidated with Lowe’s
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`IPR of U.S. Patent No. 7,915,631
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`Petitioners and subject to the page limits applicable for a single party. Petitioners
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`will not introduce any argument or discovery not introduced by Lowe’s Petitioners,
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`and will not request additional depositions or deposition time. Since Petitioner and
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`Lowe’s Petitioners rely on the same expert declaration, Petitioner agrees to a single
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`deposition for Petitioner’s expert and a single deposition for PO’s expert.
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`Moreover, Petitioner agrees to a single hearing, subject to the time limits for a
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`single party. These procedures will simplify briefing and minimize the burden on
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`the parties as well as the Board. Accordingly, this factor weighs in favor of joinder.
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`IV. REQUEST FOR SHORTENED PRELIMINARY RESPONSE TIME
`Petitioner respectfully requests that the Board specify a shortened period of
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`at most four (4) weeks (to June 13, 2018) for PO to file a Preliminary Response to
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`the Petition. Since the issues presented by this Petition and the Lowe’s IPR are
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`identical, PO will not be burdened by a shortened response period. Moreover,
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`because this petition is substantively identical to IPR2018-00666, Petitioner
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`respectfully submits the Board may be in a position to resolve the question of
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`institution expeditiously after PO’s Preliminary Response, should PO choose to
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`submit one.
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`V. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the grounds in
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`the accompanying Petition for IPR of the ’631 patent be instituted, and that the
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`IPR of U.S. Patent No. 7,915,631
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`Board grant this Motion for Joinder to join this proceeding with IPR2018-00066.
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`In addition, Petitioner respectfully requests a shortened response period (to June
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`13, 2018) for a Patent Owner Preliminary Response.
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`Dated: May 16, 2018
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`Respectfully submitted,
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`By: /Gabrielle E. Higgins/
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`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
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`Mailing address for all PTAB
`correspondence:
`ROPES & GRAY LLP,
`IPRM – Floor 43
`Prudential Tower
`800 Boylston Street
`Boston, MA 02199-3600
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` Attorney Docket No. 112868-0001-658
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`IPR of U.S. Patent No. 7,915,631
`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing MOTION FOR
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`JOINDER UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
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`AND REQUEST FOR SHORTENED RESPONSE TIME FOR PATENT
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`OWNER’S PRELIMINARY RESPONSE has been served by U.S. Express Mail
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`on Patent Owner indicated for U.S. Patent No. 7,915,631 through the following
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`correspondence address of record:
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`Correspondence Address: Andrew D. Meikle
`BIRCH STEWART KOLASCH & BIRCH, LLP
`8110 Gatehouse Road
`Suite 100 East
`FALLS CHURCH VA 22042-1248
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`Dated: May 16, 2018
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`Express Mail Label No. EF175142022 US
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`Catherine Nyarady
`PAUL, WEISS, RIFKIND, WHARTON &
`GARRISON LLP
`1285 Avenue of the Americas
`New York, NY 10019
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`Express Mail Label No. EF 175142075 US
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`Respectfully submitted,
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`ROPES & GRAY LLP
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`By: /Crena Pacheco/
`Name: Crena Pacheco
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