UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS, INC.
`Petitioner
`
`v.
`
`UNILOC LUXEMBOURG, S.A.,
`Patent Owner
`
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 6,216,158
`Case IPR No.: IPR2018-01503
`
`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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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS, INC.
`Petitioner
`
`v.
`
`UNILOC LUXEMBOURG, S.A.,
`Patent Owner
`
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 6,216,158
`Case IPR No.: IPR2018-01503
`
`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
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`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioner LG
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`Electronics, Inc. (“LGE”) moves for joinder with the Inter Partes Review of U.S.
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`Patent No. 6,216,158, Apple Inc.. v. Uniloc USA, Inc., IPR2018-00361 (“the Apple
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`IPR”), for which trial was recently instituted on July 16, 2018. IPR2018-00361,
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`paper 8. This motion is timely because it is filed within one month of institution of
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`the Apple IPR. 37 C.F.R. § 42.122(b). Petitioner understands that the petitioner in
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`the Apple IPR (“the Apple Petitioner”) does not oppose Petitioner’s request for
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`joinder.
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`Petitioner requests institution of its 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 Petitioner and the mandatory notices under 37 C.F.R. § 42.8(b).
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`The concurrently filed Petition and the Apple IPR petition challenge the same
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`claims of the ’158 patent on the same grounds relying on the same prior art and
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`evidence, including declarations identical in substance from the same experts.1
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`1 The declarations have been updated to only reflect retention by Petitioner and is
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`otherwise identical to the declarations submitted in the Apple IPR.
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`-1-
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`Petitioner agrees 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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`Petitioner’s joinder to the Apple IPR.
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`Further, if joined, Petitioner agrees 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). Petitioner will only
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`assume the lead role in the proceedings if the Apple Petitioner is no longer a party
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`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). Petitioner agrees to consolidated
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`filings for all substantive papers in the proceeding. The Apple Petitioner and
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`Petitioner 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 Petitioner, Petitioner 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, Petitioner will
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`not seek additional depositions or deposition time, and will coordinate deposition
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`questioning and hearing presentations with the Apple Petitioner. Petitioner agrees
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`-2-
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`to the foregoing conditions even in the event that other IPRs filed by other, third-
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`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 ’158 patent in
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`district court against LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG
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`Electronics Mobilecomm U.S.A., Inc.. Joinder will estop LGE from asserting in
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`district court those issues resolved in a final decision from the Apple IPR, thus
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`narrowing the issues in the district court actions. See 35 U.S.C. § 315(e)(2).
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`Finally, joinder would not complicate or delay the Apple IPR, and would not
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`adversely affect any schedule set in that proceeding. In sum, joinder would
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`promote efficient adjudication in multiple forums. On the other hand, if instituted,
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`maintaining the Petitioner’s IPR proceeding separate from that of the Apple IPR
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`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 LGE. Its interests may not be
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`adequately protected in the Apple IPR proceedings, particularly if the Apple
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`-3-
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`Petitioner settles with the Patent Owner. Petitioner should be allowed to join in a
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`proceeding affecting a patent asserted against it.
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`II. BACKGROUND AND RELATED PROCEEDINGS
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`Uniloc Luxembourg S.A. (the “Patent Owner”) is the owner of the ’158
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`Patent. The Patent Owner asserted the ’158 Patent against LGE in Uniloc USA,
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`Inc. et al. v. LG Electronics U.S.A., Inc. et al., Case No. 4:17-cv-00827 (N.D. Tex.
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`Filed 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. 3:18-cv-02915 (N.D. Cal. Filed May 17,
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`2018)). In addition, the Patent Owner asserted the ’158 Patent against Exclusive
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`Group LLC; Apple Inc.; and Amazon.com, Inc. See Uniloc USA, Inc. et al. v.
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`Exclusive Group LLC, 1:17-cv-03962 (S.D. Ind. filed Oct. 27, 2017); Uniloc USA,
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`Inc. et al. v. Apple Inc., 3:18-cv-00365 (N.D. Cal. filed Jan. 17, 2018), see also
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`2:17-cv-00470 (E.D. Tex., terminated) and 2:17-cv-00571 (E.D. Tex., terminated);
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`and Uniloc USA, Inc. et al. v. Amazon.com, Inc., 2:18-cv-00123 (E.D. Tex. filed
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`Mar. 31, 2018). On December 20, 2017, Apple filed their IPR petition, IPR2018-
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`00361, against the ’158 patent. The Board instituted the Apple IPR on July 16,
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`2018. Petitioner here timely moves for joinder with the Apple IPR.
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`-4-
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`III. STATEMENT OF REASONS FOR THE REQUESTED RELIEF
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`A. Legal Standards and Applicable Rules
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`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
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`new grounds of unpatentability asserted in the petition; (3) explain
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`what impact (if any) joinder would have on the trial schedule for the
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`existing review; and (4) address specifically how briefing and
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`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.
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`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, Petitioner has copied
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`the substance of Apple’s petition and
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`accompanying declaration. Petitioner does 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. Petitioner
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`retained the same experts, who have submitted identical declaratiosn as in the
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`Apple IPR. The Patent Owner should not require any discovery beyond that which
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`it may need in the Apple IPR—nor should the Board permit any. The Petition
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`presents no new substantive issues relative to the Apple IPR and does not seek to
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`broaden the scope of the Apple IPR.
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`For efficiency’s sake, Petitioner 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.
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`Petitioner presents 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 LGE from asserting
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`in district court those issues resolved in a final decision in the Apple IPR, thus
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`narrowing the issues in the district court actions. See 35 U.S.C. § 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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`D.
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`Joinder is Appropriate
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`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 Petitioner seeks 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 Petitioner’s 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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`Petitioner is filing this Petition and joinder motion to ensure that the trial is
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`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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`1. Without joinder, LGE will be prejudiced
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`A denial of joinder would prejudice LGE. Its substantial interests, as partys
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`against whom the ’158 patent has been asserted in a federal district court action,
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`may not be adequately protected by the Apple Petitioner in the Apple IPR
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`proceedings. For example, LGE has an interest that the Apple IPR reach a final
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`determination to facilitate a timely and cost-effective end to the controversy
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`between LGE and the Patent Owner. LGE should be allowed to join in a
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`proceeding affecting a patent asserted against it.
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`2.
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`Joinder will not unduly prejudice any party
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`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
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`Joinder will not affect the substance, procedure, or scheduling of the Apple
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`IPR. Petitioner files 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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`For the foregoing reasons, Petitioner respectfully requests inter partes
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`review of U.S. Patent No. 6,216,158 and joinder with Apple Inc. v. Uniloc USA,
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`Inc., IPR2018-00361.3
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`Dated: August 3, 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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`CERTIFICATE OF SERVICE
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`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 August 3, 2018, by overnight mail at
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`the 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. 3:18-cv-02915 as follows:
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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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`Dated: August 3, 2018
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