PUBLIC VERSION – REDACTED
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`Trials@uspto.gov
`571-272-7822
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`Paper 87
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`Date: January 9, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE ____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC, ZTE (USA), INC.,
`SAMSUNG ELECTRONICS CO., LTD.,
`LG ELECTRONICS INC., HUAWEI DEVICE USA, INC.,
`HUAWEI DEVICE CO. LTD., HUAWEI TECHNOLOGIES CO. LTD.,
`HUAWEI DEVICE (DONGGUAN) CO. LTD.,
`HUAWEI INVESTMENT & HOLDING CO. LTD.,
`HUAWEI TECH. INVESTMENT CO. LTD., and
`HUAWEI DEVICE (HONG KONG) CO. LTD.,
`Petitioner,
`
`v.
`
`CYWEE GROUP LTD.,
`Patent Owner.
`____________
`
`IPR2018-01257
`Patent 8,552,978 B2
`____________
`
`Before PATRICK M. BOUCHER, KAMRAN JIVANI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`PUBLIC VERSION – REDACTED
`
`
`
`Trials@uspto.gov
`571-272-7822
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`
`
`
`
`
`
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`
`Paper 87
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`Date: January 9, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE ____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC, ZTE (USA), INC.,
`SAMSUNG ELECTRONICS CO., LTD.,
`LG ELECTRONICS INC., HUAWEI DEVICE USA, INC.,
`HUAWEI DEVICE CO. LTD., HUAWEI TECHNOLOGIES CO. LTD.,
`HUAWEI DEVICE (DONGGUAN) CO. LTD.,
`HUAWEI INVESTMENT & HOLDING CO. LTD.,
`HUAWEI TECH. INVESTMENT CO. LTD., and
`HUAWEI DEVICE (HONG KONG) CO. LTD.,
`Petitioner,
`
`v.
`
`CYWEE GROUP LTD.,
`Patent Owner.
`____________
`
`IPR2018-01257
`Patent 8,552,978 B2
`____________
`
`Before PATRICK M. BOUCHER, KAMRAN JIVANI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`PUBLIC VERSION – REDACTED
`
`
`
`IPR2018-01257
`Patent 8,552,978 B2
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Denying Patent Owner’s Motion to Amend
`Denying Patent Owner’s First and Second Motions to Terminate
`35 U.S.C. § 318(a)
`
`In response to a Petition (Paper 1, “Pet.”) filed by Google LLC
`(“Google” or “Petitioner”1), we instituted an inter partes review of claims 10
`and 12 of U.S. Patent No. 8,552,978 B2 (Ex. 1001, “the ’978 patent”).
`Paper 8 (“Dec.”). We subsequently joined (1) ZTE (USA), Inc. (“ZTE”), (2)
`Samsung Electronics Co., Ltd. (“Samsung”), (3) LG Electronics Inc. (“LG”),
`and (4) Huawei Device USA, Inc., Huawei Device Co. Ltd., Huawei
`Technologies Co. Ltd., Huawei Device (Dongguan) Co. Ltd., Huawei
`Investment & Holding Co. Ltd., Huawei Tech. Investment Co. Ltd., and
`Huawei Device (Hong Kong) Co. Ltd. (collectively, “Huawei”) as parties to
`this proceeding. Papers 35–38.
`During the trial, CyWee Group Ltd. (“Patent Owner”) filed a
`Response (Paper 14, “PO Resp.”) to which Petitioner filed a Reply (Paper
`28, “Reply”) and Patent Owner filed a Sur-reply (Paper 48, “Sur-reply”).
`Patent Owner also filed a Motion to Amend the claims of the ’978 patent.
`Paper 15 (“Mot. Amend”). Petitioner opposed Patent Owner’s Motion to
`Amend (Paper 29, “Opp. Amend”), Patent Owner replied (Paper 46, “Reply
`Amend”), and Petitioner sur-replied (Paper 64, “Sur-reply Amend”). In
`
`1 As noted, additional parties were joined to this proceeding during the trial.
`Because those joined parties participated in an “understudy” role, we refer
`interchangeably to Google LLC or to the entire group of petitioner parties as
`“Petitioner” without distinction unless identification of a particular petitioner
`is relevant.
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`2
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`addition, Patent Owner filed a First Motion to Terminate this proceeding
`based on Petitioner’s alleged failure to identify all real parties in interest
`and/or privies. Paper 40 (“Mot. Term.”). Petitioner opposed Patent Owner’s
`Motion to Terminate (Paper 51, “Opp. Term.”), Patent Owner replied (Paper
`65, “Reply Term.”), and Petitioner sur-replied (Paper 72, “Sur-reply
`Term.”).2 Subsequent to the Federal Circuit’s decision in Arthrex, Inc. v.
`Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), we authorized Patent
`Owner’s request to file a Second Motion to Terminate to preserve Patent
`Owner’s positions related to the Constitutional concerns raised by that
`decision. Paper 823 (Second Mot. Term.). To this, Petitioner filed an
`opposition. Paper 86. An oral hearing was held with the parties, and a copy
`of the transcript was entered into the record. Paper 73 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`claims on which we instituted trial. Based on the record before us, Petitioner
`has shown, by a preponderance of the evidence, that (1) the Petition is not
`barred by 35 U.S.C. §§ 312(a)(2) or 315(b), as alleged by Patent Owner in
`its First Motion to Terminate; (2) claims 10 and 12 of the ’978 patent are
`unpatentable; and (3) Patent Owner’s proposed amended claims are
`unpatentable. We also deny Patent Owner’s Second Motion to Terminate
`for the reasons discussed below.
`
`2 Papers 51 and 65 are filed under seal. Publicly available, redacted versions
`of those papers are available in the record as Papers 52 and 66 respectively.
`3 Paper 82 is filed under seal. A publicly available, redacted version of
`Patent Owner’s second Motion to Terminate is available in the record as
`Paper 83.
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`3
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`I. BACKGROUND
`A. The ’978 Patent
`The ’978 patent “generally relates to a 3D pointing device,” which is
`described as having the function of “detecting motions of the device and
`translating the detected motions to a cursor display such as a cursor pointing
`on the screen . . . of a 2D display device.” Ex. 1001, 1:22–23, 1:29–33. For
`example, the pointing device “may be a mouse of a computer or a pad of a
`video game console” and the display device “may be a part of the computer
`or the video game console.” Id. at 1:36–39. A user may then perform
`control actions and movements with the pointing device for some purpose,
`such as playing a video game. Id. at 1:52–55. For example, when the user
`moves the pointing device, a pointer on the display device may “move along
`with the orientation, direction and distance travelled by the pointing device.”
`Id. at 1:56–61.
`Figure 3 of the ’978 patent is reproduced below.
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`Figure 3 is an exploded diagram showing electronic device 300, which may
`correspond to a pointing device. Id. at 9:14–16. Within housing 330,
`formed of top cover 310 and bottom cover 320, are rotation sensor 342,
`accelerometer 344, and magnetometer 345, each attached to printed circuit
`board 340, as well as other components that allow data transmission and
`processing. Id. at 9:26–33.
`The ’978 patent refers to rotation sensor 342, accelerometer 344, and
`magnetometer 345 as “a nine-axis motion sensor module.” Id. at 9:57–62.
`The term “nine-axis” refers to and includes three angular velocities ωx, ωy,
`ωz detected by rotation sensor 342, three axial accelerations Ax, Ay, Az
`detected by accelerometer 344, and three “magnetisms” Mx, My, Mz
`detected by magnetometer 345. Id. at 9:65–10:23. The x, y, and z
`components are illustrated in the patent for a Cartesian spatial reference
`frame relative to electronic device 300, but, more generally, “may not need
`to be orthogonal in a specific orientation and they may be rotated in different
`orientations.” Id. at 10:23–29.
`Various dynamic environments may present external influences that
`impact the ability to calculate orientation accurately. See id. at 15:53–16:4.
`For example, nongravitational forces may cause undesirable axial
`accelerations and/or extraneous electromagnetic fields may cause
`undesirable magnetism. Id. at 15:55–60. Such complications are addressed
`with a method illustrated by the flow diagram shown in Figure 7 of the ’978
`patent, reproduced below.
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`Figure 7 shows a method “for obtaining and/or outputting a resultant
`deviation including deviation angles in a spatial reference frame of an
`electronic device.” Id. at 13:60–63. The method of Figure 7 uses
`quaternions, which Petitioner’s declarant, Majid Sarrafzadeh, Ph.D.,
`explains are four-valued vector generalizations of complex numbers with
`“special mathematical properties that allow them to describe rotations
`efficiently.” Ex. 1002 ¶¶ 30–31.
`After obtaining a previous state of the nine-axis sensor module at
`steps 705 and 710, the method obtains measured angular velocities ωx, ωy, ωz
`from the motion sensor signals of the nine-axis motion sensor module at a
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`current time, at steps 715 and 720. Ex. 1001, 14:23–43. A current-time
`measured state of the nine-axis motion sensor module is then obtained by
`obtaining measured axial accelerations Ax, Ay, Az at step 725; and
`predicted axial accelerations Ax′, Ay′, Az′ based on measured angular
`velocities ωx, ωy, ωz are calculated at step 730. Id. at 14:43–51. This allows
`obtaining an updated state of the nine-axis motion sensor module at step 735
`by comparing the current state with the measured state. Id. at 14:51–54.
`“[T]o provide a continuous loop,” the updated state of the nine-axis motion
`sensor module is output to the previous state at step 740, i.e., by outputting
`the third quaternion obtained at step 735 to the first quaternion identified at
`step 710 for the previous state. Id. at 14:62–15:3. Ultimately, the resultant
`deviation is obtained at step 745, “whereby the resultant deviation
`compris[es] deviation angles associated with the updated state of the nine-
`axis motion module[,] excluding said undesirable external interferences in
`the dynamic environments.” Id. at 14:54–62.
`
`B. Challenged Claims
`Challenged claims 10 and 12 are reproduced below.
`10. A method for compensating rotations of a 3D pointing
`device, comprising:
`generating an orientation output associated with an
`orientation of the 3D pointing device associated with three
`coordinate axes of a global reference frame associated with
`Earth;
`generatin[g] a first signal set comprising axial
`accelerations associated with movements and rotations of the
`3D pointing device in the spatial reference frame;
`generating a second signal set associated with Earth’s
`magnetism; generating the orientation output based on the first
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`Patent 8,552,978 B2
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`signal set, the second signal set and the rotation output or based
`on the first signal set and the second signal set;
`generating a rotation output associated with a rotation of
`the 3D pointing device associated with three coordinate axes of
`a spatial reference frame associated with the 3D pointing
`device; and
`using the orientation output and the rotation output to
`generate a transformed output associated with a fixed reference
`frame associated with a display device, wherein the orientation
`output and the rotation output is generated by a nine-axis
`motion sensor module; obtaining one or more resultant
`deviation including a plurality of deviation angles using a
`plurality of measured magnetisms Mx, My, Mz and a plurality
`of predicted magnetism Mx′, My′, Mz′ for the second signal set.
`
`Ex. 1001, 36:62–37:21.
`
`12. The method of claim 10, wherein the orientation output is a
`rotation matrix, a quaternion, a rotation vector, or comprises
`three orientation angles.
`
`Id. at 37:36–38.
`
`C. Evidence
`Petitioner relies on the following references:
`Bachmann
`US 7,089,148 B1
`Aug. 8, 2006
`Zhang
`US 2004/0095317 A1
`May 20, 2004
`Liberty
`US 7,158,118 B2
`Jan. 2, 2007
`
`Ex. 1004
`Ex. 1005
`Ex. 1006
`
`In addition, Petitioner relies on Declarations by Majid Sarrafzadeh,
`Ph.D., Exs. 1002, 1018, 1044, and by Collin W. Park, Ex. 1038.
`Dr. Sarrafzadeh was cross-examined by Patent Owner, and a transcript of his
`deposition was entered into the record. Ex. 2033. Mr. Park was cross-
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`Patent 8,552,978 B2
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`examined by Patent Owner, and a transcript of his deposition was entered
`
`into the record. Ex. 2045.4
`
`Patent Owner relies on Declarations by Joseph LaViola, Ph.D.,
`
`Exs. 2004, 2011, 2032, and by Shun-Nan Liou, Ex. 2020. Dr- LaViola was
`
`twice cross-examined by Petitioner, and transcripts of his depositions were
`
`entered into the record. Exs. 1019, 1043.5 No cross-examination testimony
`
`of Mr. Liou was entered into the record.6
`
`D. Asserted Grounds of Unpatentabilily
`
`Petitioner challenges claims 10 and 12 on the following grounds.
`
`Pet. 7.
`
`35 U.S.C. §
`
`References
`
`Claims
`Challen ; ed
`
`10, 12
`
`10, 12
`
`Liberty, Bachmann
`
`Zhan-, Bachmann
`
`103(a)
`
`4 Exhibit 2045 is filed under seal. A redacted copy of this exhibit is
`available in the record as Exhibit 1049.
`
`5 Exhibit 1043 is filed under seal. A redacted copy of this exhibit is
`available in the record as Exhibit 1048.
`
`6 In the preliminary phase of this proceeding, Patent Owner relied on a
`Declaration by Gary L- Blank, PhD. Ex- 2001. After institution of the trial,
`Patent Owner expressly withdrew Dr. Blank’s testimony. Paper 18.
`7 The Leahy—Smith America Invents Act (“AIA”) included revisions to 35
`U.S-C. § 103 that became effective on March 16, 2013. Because the ’978
`patent issued from an application filed before March 16, 2013, we apply the
`pre-AIA versions of the statutory bases for unpatentability.
`
`9
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`E. Real Parties in Interest
`ZTE identifies ZTE Corporation as a real party in interest, Paper 35,
`8; Samsung identifies Samsung Electronics America, Inc., as a real party in
`interest, Paper 36, 8; and LG identifies LG Electronics U.S.A., Inc., as a real
`party in interest, Paper 37, 8. In addition, LG further notes that LG
`Electronics Mobile Comm U.S.A., Inc. “merged into and is now a part of
`LG Electronics U.S.A.” Paper 37, 8.
`We elaborate on the factual history regarding the identification of real
`parties in interest below in discussing Patent Owner’s First Motion to
`Terminate.
`
`F. Related Matters
`The parties identify the following matters as involving the ’978
`patent: (1) CyWee Group Ltd. v. Google, Inc., No. 1:18-cv-00571 (D. Del.);
`(2) CyWee Group Ltd. v. ZTE Corporation, No. 3:17-cv-02130 (S.D. Cal.);
`(3) CyWee Group Ltd. v. HTC Corporation, No. 2:17-cv-00932 (W.D.
`Wash.); (4) CyWee Group Ltd. v. Motorola Mobility LLC, No. 1:17-cv-
`00780 (D. Del.); (5) CyWee Group Ltd. v. Huawei Technologies Co., Inc.,
`No. 2:17-cv-00495 (E.D. Tex.); (6) CyWee Group Ltd. v. LG Electronics,
`Inc., No. 3:17-cv-01102 (S.D. Cal.); and (7) CyWee Group Ltd. v. Samsung
`Electronics Co. Ltd., No. 2:17-cv-00140 (E.D. Tex.). Pet. 5–6; Paper 6, 2–3.
`In addition, Petitioner identifies CyWee Group Ltd. v. Apple Inc., No. 4:14-
`cv-01853 (N.D. Cal.) as involving the ’978 patent. Pet. 6.
`Patent Owner also identifies IPR2018-01258 as related to this
`proceeding in that the subject patent of that proceeding, U.S. Patent No.
`
`10
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`IPR2018-01257
`Patent 8,552,978 B2
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`8,441,438 B2 (“the ’438 patent”), is related to the ’978 patent. Paper 6, 3.
`The ’438 patent is also the subject of IPR2019-00143.
`
`II. FIRST MOTION TO TERMINATE:
`REAL PARTIES IN INTEREST AND PRIVIES
`
`Patent Owner alleges that LG, Samsung, and ZTE were real parties in
`interest at the time Google filed its Petition, and that Google failed to
`identify those parties as such, as required by 35 U.S.C. § 312(a)(2). Mot.
`Term. 1. Moreover, Patent Owner alleges that, because it served an
`infringement complaint on LG and Samsung more than a year prior to the
`filing of Google’s Petition, and because LG and Samsung are both real
`parties in interest and Google’s privies, the Petition is time-barred under 35
`U.S.C. § 315(b). See id. Patent Owner therefore moves that we terminate
`this inter partes review. See id. For the reasons that follow, we deny the
`motion.
`
`A. Background
`Google leads an open-source project associated with the Android
`operating system. See Ex. 1030, 1. According to Google publications,
`Android is open-source software, which is available royalty-free to anyone,
`and anyone may modify or customize it, including Android competitors. See
`Ex. 2016, 2; Ex. 1030, 1; Ex. 1031; Ex. 1032, 1; Ex. 1033, 2. Associated
`with the operating system is the Android Networked Cross-License
`(“PAX”), whose members include Google, Samsung, and LG. Ex. 1035; see
`also Mot. Term. 4 (citing Ex. 2016); Opp. Term. 5. According to its
`website, PAX is “free to join and open to anyone,” and “covers Android and
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`Google Applications preinstalled on devices that meet Android’s
`compatibility requirements.” Ex. 1035, 1; accord Opp. Term. 5. Google has
`also entered into a number of Mobile Application Distribution Agreements
`(“MADAs”) with parties that include at least Samsung
`. Exs. 2014,
`2019, 2051, 2053. Other Android-related agreements, which Google made
`with at least
` include an
` (Ex. 2050), an
`
`
` (Ex. 2052), a
`(Ex. 2054), and an
` (Ex. 2055).
`Before Google filed its Petition, Patent Owner had served complaints
`on Petitioner parties, alleging infringement of the ’978 patent, as follows:
`(1) Samsung on February 23, 2017; (2) LG on June 7, 2017; (3) Huawei on
`June 14, 2017; (4) ZTE on November 1, 2017; and (5) Google on April 18,
`2018. Mot. Term. 3; Mot. Opp. 2. Patent Owner represents that the Android
`operating system is “a major component” of its infringement contentions for
`each of these cases. Mot. Term. 3 (citing Ex. 2015 (infringement
`contentions for a Samsung product)). Petitioner does not specifically dispute
`this representation, and we accept it as accurate for the purpose of this
`decision. See Opp. Term. 3 (acknowledging Patent Owner has alleged that
`the Android operating system runs on the accused LG, Samsung, and ZTE
`devices). Google is also a party to a
`
`
` to
`
`which
`
`. See Ex. 2056.
`On June 14, 2018, the one-year anniversary of the date Patent Owner
`served its complaint against Huawei, and more than a year after Patent
`Owner served the complaints on Samsung and LG, Google filed its Petition
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`for inter partes review, naming only itself and Huawei as real parties in
`interest. Pet. 5. According to Google, it included Huawei as a real party in
`interest, in part, because Huawei “was involved in Google’s IPR petitions
`prior to filing.” Sur-reply Term. 2. Successively on January 8, 10, and 11 of
`2019, Samsung, ZTE, and Huawei each filed a petition for inter partes
`review with a concurrent motion for joinder. See Samsung Electronics Co.,
`Ltd. v. CyWee Group Ltd., IPR2019-00534, Papers 1, 3; ZTE (USA), Inc. v.
`CyWee Group Ltd., IPR2019-00525, Papers 2, 3; Huawei Device USA, Inc.
`v. CyWee Group Ltd., IPR2019-00563, Papers 1, 3. In each of these
`petitions, the filing party named only itself and closely related corporate
`entities as the real parties in interest. See IPR2019-00534, Paper 1 at 1;
`IPR2019-00525, Paper 2 at 5; IPR2019-00563, Paper 1 at 2.
`LG filed a similar petition and motion for joinder on January 10,
`2019. LG Electronics Inc. v. CyWee Group Ltd., IPR2019-00560, Papers 1
`and 2. LG’s petition named itself as a real party in interest, and “further
`identifie[d] as real-parties-in-interest the parties identified in IPR2018-01257
`(to which this petition seeks joinder): Google LLC, Huawei Device USA,
`Inc., Huawei Device Co. Ltd., Huawei Technologies Co. Ltd., Huawei
`Device (Dongguan) Co. Ltd., Huawei Investment & Holding Co. Ltd.,
`Huawei Tech. Investment Co. Ltd., Huawei Device (Hong Kong) Co. Ltd.”
`IPR2019-00560, Paper 1 at 3. Similarly, on June 15, 2019, when LG sought
`joinder to IPR2019-00143 (i.e., a proceeding involving the related ’438
`patent), its petition identified itself as a real party in interest, and “further
`identifie[d] as real-parties-in-interest the parties identified in IPR2019-00143
`(to which the petition seeks joinder): ZTE (USA). Inc. and ZTE
`
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`Corporation.” LG Electronics Inc. v. CyWee Group Ltd., IPR2019-01203,
`Paper 2 at 1.
`On May 21, 2019, Patent Owner filed a Motion for Additional
`Discovery (Paper 24), seeking documents relating to Google’s alleged
`“failure to name all Real Parties in Interest to its Petition (Paper 1) in the
`present IPR, including at least Samsung . . . , LG . . . , and ZTE.”
`Paper 24, 1. In denying this motion, we weighed the factors set forth in
`Garmin International, Inc. v. Cuozzo Speed Technologies, LLC, IPR2012-
`00001, Paper 26 at 6–7 (PTAB Mar. 5, 2013) (precedential), and found that
`Patent Owner had not met its burden to show, as required under 37 C.F.R. §
`42.51(b)(2)(i), that the requested additional discovery was “in the interests
`of justice.” Paper 30, 5–10. In particular, we found that the fourth and fifth
`Garmin factors (understandability of instructions and degree of burden to
`answer) weighed heavily against Patent Owner, and that the request was
`untimely. Id. at 8–10.
`Nevertheless, in the related IPR2019-00143 inter partes review,
`involving ZTE’s separate challenge to the related ’438 patent, the Board
`authorized Patent Owner’s motion for additional discovery based on a more
`narrowly tailored set of discovery requests than those rejected in the instant
`trial. IPR2019-00143, Paper 20 at 11. In the present case, after the end of
`briefing, and after Patent Owner had argued the motion during the oral
`hearing, we authorized Patent Owner to submit additional evidence
`supporting the Motion to Terminate. See Papers 74, 75. Accordingly,
`Patent Owner submitted documents on November 7, 2019 that we discuss
`below, along with a statement identifying the relevant portions of those
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`14
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`documents. See Paper 768, Exs. 2049–2056. Petitioner filed objections to
`this submission on November 14, 2019. Paper 78.
`
`
`B. Analysis
`Under 35 U.S.C. § 315(b), we may not institute an inter partes review
`“if the petition requesting the proceeding [wa]s filed more than 1 year after
`the date on which the petitioner, real party in interest, or privy of the
`petitioner [wa]s served with a complaint alleging infringement of the
`patent.” Patent Owner served complaints on Samsung and LG more than a
`year prior to June 14, 2018, when Google filed its Petition for inter partes
`review. See Mot. Term 3; Mot. Opp. 2. Thus, if we were to determine that
`either Samsung or LG is a real party in interest or privy of Google, the
`Petition would be untimely. Patent Owner argues that LG is a real party in
`interest by LG’s own admission, and that Google has failed to meet its
`burden to show that LG and Samsung are not real parties in interest or
`privies. See Mot. Term. 6, 9–15.
`Patent Owner also argues that Google has not met its burden to show
`that it has correctly identified all real parties in interest in the Petition. Id. at
`6, 10–15; 35 U.S.C. § 312(a)(2) (“A petition . . . may be considered only if
`. . . the petition identifies all real parties in interest.”). In Patent Owner’s
`view, Google’s Petition failed to correctly name LG, Samsung, and ZTE as
`real parties in interest under § 312(a)(2). See Mot. Term. 1.
`Google bears the burden of persuasion to demonstrate that its Petition
`is not time-barred under § 315(b) based on any complaint served on a real
`
`
`8 Paper 76 is filed under seal. A redacted copy of this paper is available in
`the record as Paper 77.
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`party in interest or privy more than a year earlier. Ventex Co., Ltd. v.
`Columbia Sportswear N.A., Inc., IPR2017-00651, Paper 152 at 4–5 (PTAB
`Jan. 24, 2019) (precedential) (citing Worlds Inc. v. Bungie, Inc., 903 F.3d
`1237, 1242 (Fed. Cir. 2018)). By the same logic, the burden of persuasion is
`on Google to show that it has identified accurately the real parties in interest
`for the purpose of complying with § 312(a)(2). Cf. Worlds, 903 F.3d at
`1242–43 (“[A]n IPR petitioner will usually be in a better position, at least
`relative to the patent owner, to access evidence relevant to the real-party-in-
`interest inquiry.”).
`By a preponderance of the evidence on this record, Google has met its
`burden of showing that LG, Samsung, and ZTE are not real parties in
`interest, and that LG and Samsung are not privies, for the reasons discussed
`below. Because the real-party-in-interest issue is distinct from that of
`privity, we address the two questions separately. See Ventex, Paper 152 at 5.
`
`
`1. Real Party in Interest
`Whether a non-party is a real party in interest is a “highly fact-
`dependent question.” Ventex, Paper 152 at 6 (quoting Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012); see also Patent Trial and
`Appeal Board Consolidated Trial Practice Guide 13 (Nov. 2019), available
`at https://go.usa.gov/xpvPF (“Whether a party who is not a named
`participant in a given proceeding nonetheless constitutes a ‘real party-in-
`interest’ or ‘privy’ to that proceeding is a highly fact-dependent question.”)).
`The question “demands a flexible approach that takes into account both
`equitable and practical considerations, with an eye toward determining
`whether the non-party is a clear beneficiary that has a preexisting,
`
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`IPR2018-01257
`Patent 8,552,978 B2
`
`established relationship with the petitioner.” Applications in Internet Time,
`LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed. Cir. 2018). Two questions
`lying at the heart of this analysis are “whether a non-party ‘desires review of
`the patent’ and whether the petition has been filed at a nonparty’s ‘behest.’”
`Id. at 1351 (citing Trial Practice Guide, 77 Fed. Reg. at 48,759). We ask
`“who, from a ‘practical and equitable’ standpoint, will benefit from the
`redress” that the inter partes review might provide. Id. at 1349. In addition,
`we “inquire whether [the petitioner] can be said to be representing [the non-
`party’s] interest.” Id. at 1353; see also Ventex, Paper 152, 8 (determining
`that Serius was a real party in interest, in part because the petitioner “Ventex
`represents Serius’s interests in this proceeding”).
`Relevant considerations include, without limitation, (1) “whether the
`non-party exercised or could have exercised control over the proceeding”;
`(2) the non-party’s relationship with the petitioner; (3) whether the non-party
`funded the proceeding; (4) the non-party’s relationship with the petition
`itself, including the nature and/or degree of involvement in the filing; and (5)
`the nature of the entity filing the petition. Trial Practice Guide, 77 Fed. Reg.
`at 48,759–60. Patent Owner alleges that Google has a preexisting,
`established relationship with LG, Samsung, and ZTE (whom, collectively
`with Huawei, Patent Owner calls the “Android Defendants”), such that they
`are real parties in interest. Mot. Term. 1–2, 9–12.
`In particular, Patent Owner raises the following as evidence: (a) LG’s
`statements in related LG petitions that Patent Owner alleges are admissions
`that LG is a real party in interest; (b) LG’s manufacture of a phone for
`Google; (c) Google’s supply of the Android operating system to LG,
`Samsung, and ZTE; (d) the PAX license; (e) Google’s MADA with
`
`17
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`IPR2018-01257
`Patent 8,552,978 B2
`
`Samsung; (f) Google’s reliance on a Samsung phone for a trademark
`registration; (g) Patent Owner’s Supplemental Submission, filed after the
`oral hearing; and (h) Google’s participation with LG, Samsung, and ZTE in
`prior district court litigation. We address these issues, in turn, in the sections
`below. Then we weigh the evidence as a whole, concluding that the
`evidence establishes that LG, Samsung, and ZTE are not real parties in
`interest to this proceeding.
`
`
`a. LG’s Statements in Related LG Petitions
`Patent Owner argues that LG’s statements in its petitions in
`IPR2019-00560 and IPR2019-01203 “are alone sufficient to prove that
`Google should have named LG as [a real party in interest] in its Petition.”
`Mot. Term. 9. In each of these petitions, LG identified LG Electronics Inc.
`(“LGE”) and LG Electronics U.S.A., Inc. (“LGEUS”) as “[t]he real-parties-
`in-interest,” and then “further identifie[d] as real-parties-in-interest the
`parties identified in” the IPR2018-01257 (i.e., this proceeding) and
`IPR2019-00143 cases, “to which the petition seeks joinder.” IPR2019-
`00560, Paper 1, 3; IPR2019-01203, Paper 2 at 1.9 According to Patent
`Owner, “[i]t is impossible under [Applications in Internet Time] for LG to
`not be at least [a real party in interest] to Google’s Petition when Google is
`admittedly [a real party in interest] to LG’s identical joinder petition.”
`Reply Term. 1.
`
`
`9 Patent Owner also cites to a similar statement in IPR2019-00559, in which
`LG sought to join related proceeding IPR2019-01258. Mot. Term. 3 (citing
`IPR2019-00559, Paper 1 at 5).
`
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`
`We do not agree that LG’s statements suggest LG was a real party in
`interest with respect to Google’s Petition. LG’s statements specify the real
`party in interest for LG’s petitions, and then, in a separate sentence, include
`the real parties in interest of the petition to be joined. Thus, by their
`structure and wording, LG’s statements indicate that LG included Google,
`Huawei, and ZTE in the respective petitions because these parties were
`listed as real parties in interest in the petitions to which LG sought to be
`joined, and would be real parties in interest in the combined proceeding.
`Furthermore, LG’s statement in the IPR2019-01203 petition does not list
`Google as a real party in interest at all. So even if LG believed that ZTE
`were a real party in interest to the IPR2019-01203 petition, this has no direct
`bearing on LG’s relationship with Google.
`The other evidence on this record is consistent with our facial
`interpretation of LG’s statements. LG’s lead counsel, Collin W. Park,
`testified that LG identified the additional entities “solely because those
`entities had already been identified as [real parties in interest] in the [Google
`or ZTE] IPRs, to which the [IPR2019-00560 and IPR2019-01203 petitions]
`sought to be joined, and for no other reason.” Ex. 1038 ¶¶ 7, 10. Mr. Park
`also stated that no party other than LG “financed or controlled in any way
`the preparation and filing” of the IPR2019-00559 and IPR2019-01203
`petitions. Id. ¶¶ 6, 9.
`Patent Owner alleges that Mr. Park’s declaration is not competent or
`credible, and thus deserves no weight. Reply Term. 4–5. According to
`Patent Owner, Mr. Park testified during his deposition that he had not read
`Applications in Internet Time. Id. at 4 (citing Ex. 2045, 191:3–14). Patent
`Owner also alleges that Mr. Park “admitted that he conducted no
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`investigation to identify [real parties in interest or privies], despite a legal
`obligation to do so.” Id. at 5 (citing Ex. 2045, 96:14–101:15, 116:8–
`119:1).10 But neither this, if true, nor Mr. Park’s admission that he had not
`read Applications in Internet Time, would contradict or significantly call into
`question Mr. Park’s testimony as to the subjective reason why LG included
`Google, Huawei, and ZTE as real parties in interest in the IPR2019-00560
`and IPR2019-01203 petitions. In light of the evidence of record, we find
`Mr. Park’s testimony credible on the issue of LG’s subjective intent.
`Therefore, for the above reasons, we determine that LG’s statements
`in the related inter partes review petitions do not suggest that LG is a real
`party in interest to this inter partes review.
`
`
`b. LG’s Manufacture of the Pixel 2 XL for Google
`Patent Owner argues that LG is a real party in interest because
`“[a]ccording to its FCC filings, LG manufactures the Pixel 2 XL for Google,
`see Ex. 2048 [PCTest Engineering Laboratory photographs of Google Pixel
`2 XL phone], one of the four Google devices CyWee accused in its district
`court complaint against Google.” Reply Term. 4 (citing Ex. 1026 ¶¶ 38, 91–
`107).
`
`
`10 Although we assume this allegation is correct for the purpose of our
`decision, we find no such admission in the cited passages of Mr. Park’s
`deposition transcript. We understand that when counsel for Patent Owner
`asked Mr. Park what steps he took to investigate the identity of real parties
`in interest prior to filing the IPR2019-00560 and IPR2019-01203 petitions,
`Mr. Park did not answer, asserting attorney work product protection. Ex.
`2045, 96:14–103:3, 116:8–119:1.
`
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`
`Although Patent Owner raised this argument for the first time in its
`supporting Reply, we consider the issue because Petitioner responded
`substantively in the Sur-reply without objection. See Sur-reply Term 2.
`Petitioner does not contest that LG manufactures Google’s Pixel 2 XL
`phone. See id. But Petitioner points to Mr. Park’s testimony stating that, to
`his knowledge as LG’s lead counsel, LG is
`
`
`
`
`” Id. (citing Ex. 1049,
`238:6–11). Petitioner also characterizes this manufacturing arrangement
`with LG as “an arm’s length commercial transaction.” Tr. 92:22; see also
`Sur-reply Term. 2. The evidence of record supports Petitioner’s
`characterization.
`Google’s relationship with LG with respect to the Pixel 2 XL is
`different fr
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