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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LG ELECTRONICS, INC.
`Petitioner
`v.
`UNILOC 2017 LLC,
`Patent Owner
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`
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`INTER PARTES REVIEW OF U.S. PATENT NO. 7,653,508
`Case IPR No.: IPR2018-01577
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`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), 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. 7,653,508, Apple Inc.. v. Uniloc USA, Inc., IPR2018-00387 (“the Apple
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`IPR”), for which trial was recently instituted on July 23, 2018. IPR2018-00387,
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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 ’508 patent on the same grounds relying on the same prior art and
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`evidence, including declaration identical in substance from the same expert.1
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`1 The declaration has been updated to only reflect retention by Petitioner 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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`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 the Apple Petitioner in the Apple
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`IPR. The Apple Petitioner will maintain the lead role in the proceedings so long as
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`it is a party to the proceedings and is not estopped under § 315(e)(1). Petitioner
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`will only assume the lead role in the proceedings if the Apple Petitioner is no
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`longer a party to the proceedings or unable to advance arguments for one or more
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`claims, or grounds, for example, because of § 315(e)(1). Petitioner agrees to
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`consolidated filings for all substantive papers in the proceeding. The Apple
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`Petitioner and Petitioner will be jointly responsible for the consolidated filings.
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`Absent a Board order precluding the Apple Petitioner from making arguments that
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`would otherwise be available to Petitioner, Petitioner will not advance any
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`arguments separate from those advanced by the Apple Petitioner in the
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`consolidated filings. These limitations will avoid lengthy and duplicative briefing.
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`Also, Petitioner will not seek additional depositions or deposition time, and will
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`coordinate deposition questioning and hearing presentations with the Apple
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`-2-
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`Petitioner. Petitioner agrees to the foregoing conditions even in the event that
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`other IPRs filed 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 ’508 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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`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
`Uniloc 2017 LLC (the “Patent Owner”) is the owner of the ’508 Patent. The
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`Patent Owner asserted the ’508 Patent against LGE in Uniloc USA, Inc. et al. v. LG
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`Electronics U.S.A., Inc. et al., Case No. 4:17-cv-00832 (N.D. Tex. Filed Oct. 13,
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`2017) (transferred and is now Uniloc USA, Inc. et al. v. LG Electronics U.S.A., Inc.
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`et al., Case No. 4:18-cv-02918 (N.D. Cal. Filed May 17, 2018)). In addition, the
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`Patent Owner asserted the ’508 Patent against Huawei Devices USA, Inc.; HTC
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`America, Inc.; Samsung Electronics America, Inc. and Apple Inc. See Uniloc
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`USA, Inc. et al. v. Huawei Devices USA, Inc., 2:17-cv-00737 (E.D. Tex. filed Nov.
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`9, 2017); Uniloc USA, Inc. et al. v. HTC America, Inc., 2:17-cv-01629 (W.D. Wa.
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`filed Nov. 1, 2017); Uniloc USA, Inc. et al. v. Samsung Electronics America, Inc.,
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`2:17-cv-00650 (E.D. Tex. filed Sep. 15, 2017); Uniloc USA, Inc. et al. v. Apple
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`Inc., 2-17-00522 (E.D. Tex. filed Jun. 30, 2017), see also 3:18-cv-00364 (N.D.
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`Cal. filed Jan. 17, 2018). On December 22, 2017, Apple filed their IPR petition,
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`IPR2018-00387, against the ’508 patent. The Board instituted the Apple IPR on
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`July 23, 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
`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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`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, 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 expert, who submitted an identical declaration as in the Apple
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`IPR. The Patent Owner should not require any discovery beyond that which it may
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`need in the Apple IPR—nor should the Board permit any. The Petition presents no
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`new substantive issues relative to the Apple IPR and does not seek to broaden the
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`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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`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.
`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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`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 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
`A denial of joinder would prejudice LGE. Its substantial interests, as parties
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`against whom the ’508 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.
`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. 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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`For the foregoing reasons, Petitioner respectfully requests inter partes
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`review of U.S. Patent No. 7,653,508 and joinder with Apple Inc. v. Uniloc USA,
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`Inc., IPR2018-00387.3
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`Dated: August 23, 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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`The undersigned certifies that, in accordance with 37 C.F.R. § 42.6(e),
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`service was made on Patent Owner as detailed below.
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`Persons served
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`Date of service August 23, 2018
`Manner of service FEDERAL EXPRESS
`Documents served Motion for Joinder
`Sean Burdick
`Uniloc USA Inc.
`Legacy Town Center
`7160 Dallas Parkway
`Suite 380
`Plano, TX 75024
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`Sean Burdick
`Uniloc 2017 LLC
`1209 Orange Street
`Wilmington, DE 19801
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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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`Dated: August 23, 2018
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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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