UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`LG ELECTRONICS, INC., HTC CORPORATION, and HTC AMERICA, INC.
`Petitioners
`v.
`UNILOC LUXEMBOURG S.A.,
`Patent Owner
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,712,723
`Case IPR No.: IPR2018-01458
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b))
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`LG ELECTRONICS, INC., HTC CORPORATION, and HTC AMERICA, INC.
`Petitioners
`v.
`UNILOC LUXEMBOURG S.A.,
`Patent Owner
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,712,723
`Case IPR No.: IPR2018-01458
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b))
`
`
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioners LG
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`Electronics, Inc. (“LG”), HTC Corporation, and HTC America, Inc. (together
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`“HTC”) (collectively “Petitioners”) move for joinder with the Inter Partes Review
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`of U.S. Patent No. 8,712,723 (“the ’723 patent”), Apple Inc.. v. Uniloc USA, Inc.,
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`IPR2018-00389 (“the Apple IPR”), for which trial was recently instituted on June
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`27, 2018. IPR2018-00389, paper 7. This motion is timely because it is filed
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`within one month of institution of the Apple IPR. 37 C.F.R. § 42.122(b).
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`Petitioners understand that the petitioner in the Apple IPR (“the Apple Petitioner”)
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`does not oppose Petitioners’ requests for joinder.
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`Petitioners request institution of the concurrently filed Petition for Inter
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`Partes Review. The Petition is a carbon copy of the original Apple IPR petition in
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`all material respects. The only substantive changes are in the introduction to
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`identify the correct Petitioners and the mandatory notices under 37 C.F.R.
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`§ 42.8(b). The concurrently filed Petition and the Apple IPR petition challenge the
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`same claims of the ’723 patent on the same grounds relying on the same prior art
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`and evidence, including a declaration identical in substance from the same expert.1
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`1 The declaration has been updated only to reflect retention by Petitioners and is
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`otherwise identical to the declaration submitted in the Apple IPR.
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`-1-
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`Petitioners agree to proceed solely on the grounds, evidence, and arguments
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`advanced, or that will be advanced, in the Apple IPR as instituted. Thus, the
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`Petition warrants institution under 35 U.S.C. § 314, and 35 U.S.C. § 315(c) permits
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`Petitioners’ joinder to the Apple IPR.
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`Further, if joined, Petitioners agree to adhere to all applicable deadlines in
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`the Apple IPR and coordinate all filings with Apple Petitioner in the Apple IPR.
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`The Apple Petitioner will maintain the lead role in the proceedings so long as it is a
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`party to the proceedings and is not estopped under § 315(e)(1). Petitioners will
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`only assume the lead role in the proceedings if the Apple Petitioner is no longer a
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`party to the proceedings or unable to advance arguments for one or more claims, or
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`grounds, for example, because of § 315(e)(1). Petitioners agree to consolidated
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`filings for all substantive papers in the proceeding. The Apple Petitioner and
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`Petitioners will be jointly responsible for the consolidated filings. Absent a Board
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`order precluding the Apple Petitioner from making arguments that would
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`otherwise be available to Petitioners, Petitioners will not advance any arguments
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`separate from those advanced by the Apple Petitioner in the consolidated filings.
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`These limitations will avoid lengthy and duplicative briefing. Also, Petitioners
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`will not seek additional depositions or deposition time, and will coordinate
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`deposition questioning and hearing presentations with the Apple Petitioner.
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`-2-
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`Petitioners agree to the foregoing conditions even in the event that other IPRs filed
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`by other, third-party petitioners are joined with the Apple IPR.
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`Joinder will help efficiently resolve the disputes among the parties. By
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`joinder, a single Board decision may dispose of the issues raised in the Apple IPR
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`for all interested parties. Further, the Patent Owner has asserted the ’723 patent in
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`district court against LG Electronics U.S.A., Inc., LG Electronics, Inc., and LG
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`Electronics Mobilecomm U.S.A., Inc., as well as HTC America, Inc. Joinder will
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`estop LG and HTC from asserting in district court those issues resolved in a final
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`decision from the Apple IPR, thus narrowing the issues in the district court actions.
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`See 35 U.S.C. § 315(e)(2). Finally, joinder would not complicate or delay the
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`Apple IPR, and would not adversely affect any schedule set in that proceeding. In
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`sum, joinder would promote efficient adjudication in multiple forums. On the
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`other hand, if instituted, maintaining the Petitioners’ IPR proceeding separate from
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`that of the Apple IPR would entail needless duplication of effort.
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`Joinder will not unduly prejudice any party. Because joinder will not add
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`any new substantive issues, delay the schedule, burden deponents, or increase
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`needless filings, any additional costs on the Patent Owner would be minimal. On
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`the other hand, denial of joinder would prejudice LG and HTC. Their interests
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`may not be adequately protected in the Apple IPR proceedings, particularly if the
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`-3-
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`
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`Apple Petitioner settles with the Patent Owner. Petitioners should be allowed to
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`join in a proceeding affecting a patent asserted against them.
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`II. BACKGROUND AND RELATED PROCEEDINGS
`Uniloc Luxembourg S.A. (the “Patent Owner”) is the owner of the ’723
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`patent. The Patent Owner asserted the ’723 patent against LG in Uniloc USA, Inc.
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`et al. v. LG Electronics U.S.A., Inc. et al., Case No. 4:17-cv-00832-O (N.D. Tex.
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`filed on Oct. 13, 2017) (transferred and is now Uniloc USA, Inc. et al. v. LG
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`Electronics U.S.A., Inc. et al., Case No. 4:18-cv-02918-PJH (N.D. Cal. filed on
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`May 17, 2018)); and against HTC in Uniloc USA, Inc. et al. v. HTC America, Inc.,
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`Case No. 2:17-cv-01629 (W.D. Wash. filed on Nov. 1, 2017) (consolidated with
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`Uniloc USA, Inc. et al. v. HTC America, Inc., Case No. 2:17-cv-01558 (W.D.
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`Wash.) (Lead case) on May 3, 2018). In addition, the Patent Owner asserted the
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`’723 patent against Samsung Electronics America, Inc. et al.; Huawei Device USA,
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`Inc. et al.; and Apple Inc. (“Apple”). See Uniloc USA, Inc. et al. v. Samsung
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`Electronics America, Inc. et al., 2:17-cv-00650 (E.D. Tex. filed on Sept. 15, 2017);
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`Uniloc USA, Inc. et al. v. Huawei Device USA, Inc. et al., 2:17-cv-00737 (E.D.
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`Tex. filed on Nov. 9, 2017); and Uniloc USA, Inc. et al. v. Apple Inc., 2:17-cv-
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`00522 (E.D. Tex. filed on June 30, 2017) (transferred and is now Uniloc USA, Inc.
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`et al. v. Apple Inc., 4:18-cv-00364 (N.D. Cal. filed on Jan. 17, 2018)). On
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`December 22, 2017, Apple filed its IPR petition, IPR2018-00389, against the ’723
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`-4-
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`patent. The Board instituted the Apple IPR on June 27, 2018. Petitioners here
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`timely move for joinder with the Apple IPR.
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`III. STATEMENT OF REASONS FOR THE REQUESTED RELIEF
`A. Legal Standards and Applicable Rules
`The Board has discretion to join a properly filed IPR petition to an IPR
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`proceeding. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); see also Dell Inc. v.
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`Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 19, at 4-6; Sony Corp. v.
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`Yissum Res. & Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013- 00326, Paper
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`15, at 3-4; Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 15, at 3-4.
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`“The Board will determine whether to grant joinder on a case-by-case basis, taking
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`into account the particular facts of each case, substantive and procedural issues,
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`and other considerations.” Dell, IPR2013-00385, Paper 19, at 3. The movants
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`bear the burden of proof in establishing entitlement to the requested relief. 37
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`C.F.R. §§ 42.20(c), 42.122(b). A motion for joinder should:
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`(1) set forth the reasons why joinder is appropriate; (2) identify any
`new grounds of unpatentability asserted in the petition; (3) explain
`what impact (if any) joinder would have on the trial schedule for the
`existing review; and (4) address specifically how briefing and
`discovery may be simplified.
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`Dell, IPR2013-00385, Paper 19, at 4.
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`-5-
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`B.
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`Joinder will not add any new grounds of unpatentability or have
`an impact on the trial schedule.
`The Petition is based on the same grounds and combinations of prior art that
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`the Board considered in deciding to institute the Apple IPR. For simplicity and
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`efficiency, Petitioners have copied the substance of Apple’s petition and
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`accompanying declaration. Petitioners do not seek to introduce grounds or claims
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`not in the Apple IPR and seeks only to join the proceeding as instituted.
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`Petitioners retained the same expert, who has submitted an identical declaration as
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`in the Apple IPR. The Patent Owner should not require any discovery beyond that
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`which it may need in the Apple IPR—nor should the Board permit any. The
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`Petition presents no new substantive issues relative to the Apple IPR and does not
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`seek to broaden the scope of the Apple IPR.
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`For efficiency’s sake, Petitioners will:
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`1. Adhere to all applicable deadlines in the Apple IPR;
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`2. Submit “consolidated” filings with the Apple Petitioner, as set forth
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`above in the statement of precise relief requested;
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`3. Refrain from requesting or reserving any additional depositions or
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`deposition time;
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`4. Refrain from requesting or reserving additional oral hearing time; and
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`-6-
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`5. Assume a second-chair role as long as the Apple Petitioner remains in
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`the proceeding.2
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`In view of these provisions, joinder should not affect the trial schedule.
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`C.
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`Joinder will promote efficiency by consolidating issues, avoiding
`wasteful duplication, and preventing inconsistency.
`Petitioners present identical arguments and supporting evidence as the Apple
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`IPR. Joinder will simplify briefing and discovery. Given that the Apple IPR and
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`the Petition address the same prior art and grounds for rejection of the same claims,
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`joining these proceedings allows for joint submissions and discovery, further
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`streamlining the proceedings. This should promote efficiency and conserve the
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`Board’s and the parties’ resources. Further, joinder will estop LG and HTC from
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`asserting in district court those issues resolved in a final written decision in the
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`Apple IPR, thus narrowing the issues in the district court actions. See 35 U.S.C.
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`§ 315(e)(2).
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`2 These limitations are consistent with previously granted joinder motions. See,
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`e.g., Enzymotech Ltd. v. Neptune Techs., IPR2014-00556, Paper 19 (July 9, 2014)
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`(agreeing to procedural concessions, such as “consolidated” responses); Gillette
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`Co. v. Zond, IPR2014-01016, Paper 13 (Nov. 10, 2014) (same); SAP Am. Inc. v.
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`Clouding IP, LLC, IPR2014-00306, Paper 13 (May 19, 2014) (same).
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`-7-
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`
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`D.
`Joinder is Appropriate
`The Board has previously stated that it is “mindful of a policy preference for
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`joining a party that does not present new issues.” Enzymotec Ltd. v. Neptune Techs
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`& Bioresources, Inc. IPR2014-00556, Paper No. 19 at 6 (July 9, 2014) (citing 157
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`CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office
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`anticipates that joinder will be allowed as of right – if an inter partes review is
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`instituted on the basis of a petition, for example, a party that files an identical
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`petition will be joined to that proceeding, and thus allowed to file its own briefs
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`and make its own arguments.”))
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`Here, because Petitioners seek institution solely on the grounds, evidence,
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`and arguments advanced, or that will be advanced, in the Apple IPR, institution is
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`warranted under 35 U.S.C. § 314 and Petitioners’ joinder to the Apple IPR is
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`appropriate under 35 U.S.C. § 315(c). No new grounds of unpatentability are
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`asserted. As explained above, joinder would not adversely impact the trial
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`schedule, briefing, or discovery in the Apple IPR, and the remaining equities
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`compel joinder.
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`Petitioners are filing this Petition and joinder motion to ensure that the trial
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`is completed in the event that the Apple Petitioner reaches settlement with Patent
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`Owner.
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`-8-
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`
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`1. Without joinder, LG and HTC will be prejudiced
`A denial of joinder would prejudice LG and HTC. Their substantial
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`interests, as parties against whom the ’723 patent has been asserted in a federal
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`district court action, may not be adequately protected by the Apple Petitioner in the
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`Apple IPR proceedings. For example, LG and HTC have an interest that the Apple
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`IPR reach a final determination to facilitate a timely and cost-effective end to the
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`controversy between LG, HTC, and the Patent Owner. LG and HTC should be
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`allowed to join in a proceeding affecting a patent asserted against it.
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`2.
`Joinder will not unduly prejudice any party
`The Petition raises issues already before the Board and long known to the
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`Patent Owner. Addressing patent validity in this proceeding, well on its way
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`towards a final determination, serves the parties’ and Board’s interests.
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`IV. CONCLUSION
`Joinder will not affect the substance, procedure, or scheduling of the Apple
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`IPR. Petitioners file this motion under the statutory joinder provisions as
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`contemplated by the AIA. Joinder will simplify the issues and promote efficiency,
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`justice, and speed.
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`-9-
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`
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`For the foregoing reasons, Petitioners respectfully request inter partes
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`review of U.S. Patent No. 8,712,723 and joinder with Apple Inc. v. Uniloc USA,
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`Inc., IPR2018-00389.3
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`Dated: July 27, 2018
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`Respectfully submitted,
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`/Anand K. Sharma/
`Anand K. Sharma, Reg. No. 43,916
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`3 Although no fee is believed to be required, the Commissioner is authorized to
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`charge any additional fees required for this Motion, to Deposit Account No. 06-
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`0916.
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`-10-
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that the foregoing
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`MOTION FOR JOINDER TO INTER PARTES REVIEW (35 U.S.C. § 315(c)
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`AND 37 C.F.R. § 42.122(b)) was served on July 27, 2018, by overnight mail at the
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`following address of record for the subject patent:
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`and upon counsel of record for the Patent Owner in the litigation pending before
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`Sean Burdick
`Uniloc USA Inc.
`Legacy Town Center
`7160 Dallas Parkway, Suite 380
`Plano, TX 75024
`(972) 905-9580
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`the U.S. District Court for the Northern District of California entitled Uniloc USA,
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`Inc, et al v. LG Electronics U.S.A., Inc., et al, Case No. 4:18-cv-02918 as follows:
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`Dated: July 27, 2018
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`Aaron Jacobs
`Prince Lobel Tye LLP
`One International Place, Suite 3700
`Boston, MA 02210
`(617) 456-8000
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`Edward R Nelson, III
`Nelson Bumgardner PC
`3131 West 7th Street, Suite 300
`Ft Worth, TX 76107
`(817) 377-3485
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`By: /Lauren K. Young/
`Lauren K. Young
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
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