Motion for Joinder; Inter Partes Review of U.S. Patent No. 8,552,978
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS INC.
`Petitioner
`v.
`
`CYWEE GROUP LTD.
`Patent Owner
`
`Case IPR2019-00560
`Patent No. 8,552,978
`
`MOTION FOR JOINDER
`UNDER 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS INC.
`Petitioner
`v.
`
`CYWEE GROUP LTD.
`Patent Owner
`
`Case IPR2019-00560
`Patent No. 8,552,978
`
`MOTION FOR JOINDER
`UNDER 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`
`
`Motion for Joinder; Inter Partes Review of U.S. Patent No. 8,552,978
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`Petitioner LG Electronics Inc. (“Petitioner”) submits concurrently herewith a
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`Petition for Inter Partes Review of U.S. Patent No. 8,552,978 (“Petition”).
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`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioner respectfully
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`requests that its Petition be instituted and joined with pending inter partes review
`
`IPR2018-01257 (“Google IPR”).
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`Petitioner’s motion for joinder and accompanying Petition are timely under
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`37 C.F.R. §§ 42.22 and 42.122(b), as they are submitted within one month of
`
`December 11, 2018, the date that the Google IPR was instituted. See Petition, Ex.
`
`1012 (Google IPR, paper 8). Under the Board’s current interpretation of the statute
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`and rules, including 37 C.F.R. § 42.122(b), the time period set forth in § 42.101(b)
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`does not apply to a Petition accompanied by a request for joinder.
`
`Joinder is appropriate because it will promote efficient resolution of the
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`issues without affecting scheduling for the pending proceeding. The Petition
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`challenges the same claims instituted in the Google IPR, and relies on the same
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`substantive arguments and substantive evidentiary record. No new grounds of
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`unpatentability are asserted in the Petition and there will be no impact on the trial
`
`schedule for the existing review. Therefore, joinder would neither complicate the
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`issues nor unduly delay the Google IPR.
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`Absent joinder, Petitioner may be prejudiced as it has a significant interest in
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`the underlying validity determination at issue in this proceeding, given the
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`1
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`Motion for Joinder; Inter Partes Review of U.S. Patent No. 8,552,978
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`potential impact on litigation proceedings between CyWee Group Ltd. (“CyWee”)
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`and Petitioner involving the same patent. Joinder would protect Petitioner’s
`
`interests and avoid the potential prejudice to Petitioner that could result from a
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`settlement between CyWee and Google LLC (“Google”).
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`Petitioner has notified counsel for original petitioners in the Google IPR
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`regarding the subject of this motion, and counsel does not oppose Petitioner’s
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`present motion.
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`BACKGROUND AND RELATED PROCEEDINGS
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`CyWee is the owner of U.S. Patent No. 8,552,978 (“the ’978 Patent”). The
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`’978 Patent is asserted against Petitioner in Cywee Group Ltd. v. LG Electronics,
`
`Inc. et al., Case No. 3-17-cv-01102, (S.D. Cal.) (“the Underlying Litigation”).
`
`The ’978 Patent was also asserted in the following actions:
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`
`
`
`
`
`
`
`
`Cywee Group Ltd. v. Google LLC, Case No. 1-18-cv-00571, (D. Del.);
`
`Cywee Group Ltd. v. ZTE Corporation et al., Case No. 3-17-cv-
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`02130, (S.D. Cal.);
`
`Cywee Group Ltd. v. HTC Corporation et al., Case No. 2-17-cv-
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`00932, (W.D. Wash.);
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`Cywee Group Ltd. v. Motorola Mobility LLC, Case No. 1-17-cv-
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`00780, (D. Del.);
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`2
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`Motion for Joinder; Inter Partes Review of U.S. Patent No. 8,552,978
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`
`
`
`
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`Cywee Group Ltd. v. Samsung Electronics Co. Ltd. et al., Case No. 2-
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`17-cv-00140, (E.D. Tex.);
`
`CyWee v. Huawei Technology, Inc., et al., 2-17-cv-00495 (E.D. Tex.);
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`Cywee Group Ltd. v. Apple Inc., Case No. 4-14-cv-01853, (N.D. Cal.).
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`The Google IPR, Case IPR2018-01257, was filed by Google on June 14,
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`2018. The Google IPR challenges claims 10 and 12 of the ’978 Patent. On
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`December 11, 2018, the Board instituted the Google IPR on all challenged claims.
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`The ’978 patent is also at issue in Samsung Electronics Co., Ltd. et al v. CyWee
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`Group Ltd., IPR2019-00534.
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`I.
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`STATEMENT OF REASONS FOR RELIEF REQUESTED
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`A.
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`Legal Standard
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`The Leahy–Smith America Invents Act (AIA) permits joinder of IPR
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`proceedings. See generally Pub. L. No. 112-29, 125 Stat. 284 (2011). The statutory
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`provision governing IPR joinder, 35 U.S.C. § 315(c), reads:
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`(c) JOINDER.—If the Director institutes an inter partes
`review, the Director, in his or her discretion, may join as a party
`to that inter partes review any person who properly files a
`petition under section 311 that the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
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`3
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`
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`Motion for Joinder; Inter Partes Review of U.S. Patent No. 8,552,978
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`Motions for joinder should: (1) set forth reasons why joinder is appropriate;
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`(2) identify any 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 existing
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`review; and (4) address specifically how briefing and discovery may be simplified.
`
`See Kyocera Corporation v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB
`
`April 24, 2013); see also Samsung Elecs. Co. Ltd. v. Unifi Sci. Batteries, LLC,
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`IPR2013-00236, Paper 22 at 3 (PTAB Oct. 17, 2013). Each of these factors
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`supporting joinder are present in this motion and are discussed in detail below.
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`B.
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`Joinder is Appropriate
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`Joinder is appropriate here because it will not “unduly complicate or delay”
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`the Google IPR. SAP America Inc. v. Clouding IP, LLC, Case IPR2014-00306,
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`Paper No. 13 at 4 (PTAB May 19, 2014). Indeed, there is “a policy preference for
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`joining a party that does not present new issues that might complicate or delay an
`
`existing proceeding.” Enzymotec Ltd. v. Neptune Technologies & Bioresources,
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`Inc., IPR2014-00556, Paper 19 at 6 (PTAB July 9, 2014).
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`The Board has authority to join a properly-filed IPR petition to an IPR
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`proceeding. See 35 U.S.C. § 315(c). The Board has found that joinder is
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`appropriate when, like here, (1) joinder is timely; (2) no new grounds of
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`unpatentability are introduced; (3) the party joining the proceeding agrees to
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`consolidated filings and discovery; (4) joinder will not affect the schedule; and (5)
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`4
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`Motion for Joinder; Inter Partes Review of U.S. Patent No. 8,552,978
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`joinder will streamline the proceedings, reduce the costs and burdens on the
`
`parties, and increase efficiencies for the Board without prejudicing the parties. See,
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`e.g., Motorola Mobility LLC v. Softview LLC, Case IPR2013-00256, Paper 10 at 4-
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`10 (PTAB Jun. 20, 2013); see also Mylan Pharmaceuticals Inc. v. Novartis AG et
`
`al., IPR2015-00268, Paper 17 (PTAB April 10, 2015). As detailed below, joinder
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`of the instant proceeding to the Google IPR is appropriate for all of these reasons.
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`1.
`
`This Joinder Motion and the Petition Are Timely
`
`The Petition and the instant motion for joinder are timely under 35 U.S.C.
`
`§ 315(c), 37 C.F.R. §§ 42.22, and 42.122(b), as they are being submitted within
`
`one month of the date that the Google IPR was instituted. Rule 42.122(b) states
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`that a motion for joinder shall be filed no later than one month after the granting of
`
`the petition that is sought to be joined. Google’s petition was granted on December
`
`11, 2018. See IPR2018-01257, Paper 8 (PTAB Dec. 11, 2018). The Petition, filed
`
`concurrently herewith on January 10, 2019, was filed less than one month from the
`
`institution date of the Google IPR.
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`2.
`
`Joinder Will Not Introduce Any New Grounds of
`Patentability
`
`Petitioner’s Petition is based only on the grounds on which the Board
`
`granted the Google IPR, for which joinder is requested. It challenges the same
`
`claims of the ’978 Patent based on the same arguments, evidence, and grounds of
`
`unpatentability that were raised in the Google IPR. In addition, Petitioner has
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`5
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`Motion for Joinder; Inter Partes Review of U.S. Patent No. 8,552,978
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`submitted the same expert witness declaration as that entered on behalf of Google
`
`in the Google IPR. There is nothing new for the Patent Owner to address or for the
`
`Board to consider in response to the Petition.
`
`3.
`
`Petitioner Agrees to Consolidated Proceedings, Including
`Briefing and other Filings.
`
`Petitioner agrees to allow Google to take the lead in the joined proceedings.
`
`Petitioner will act as an “understudy” and will not assume an active role unless the
`
`original petitioner ceases to participate in the instituted IPR. Accordingly, the
`
`proposed joinder will neither unduly complicate the Google IPR nor delay its
`
`schedule. Petitioner will work with Google to submit consolidated filings in an
`
`arrangement similar to that adopted by the Board in other joined proceedings. See,
`
`e.g., Motorola Mobility LLC v. Softview LLC, IPR2013-00256, Paper 10 at 9
`
`(PTAB June 20, 2013); Twitter, Inc. and Yelp Inc. v. Evolutionary Intelligence,
`
`LLC, IPR2014-00812, Paper 12 at 4; IPR2014-00086, Paper 16 at 4.
`
`Petitioner will rely on Google to take testimony and defend depositions of
`
`witnesses, unless Google wishes otherwise or until Google terminates its
`
`involvement in the joined proceeding, and Petitioner will refrain from requesting
`
`or reserving any additional deposition or oral hearing time. Petitioner is willing to
`
`agree to other procedural concessions necessary to minimize complication or delay
`
`and result in a speedy trial with little or no impact on the Google IPR or the Board.
`
`In short, as long as Google remains an active participant in the IPR, Petitioner will
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`6
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`Motion for Joinder; Inter Partes Review of U.S. Patent No. 8,552,978
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`take an “understudy” role and work with Google to avoid procedural disruptions.
`
`Petitioner will assume the primary role only if Google ceases to participate in the
`
`IPR. See, e.g., Mylan Pharmaceuticals Inc. v. Novartis AG et al., IPR2015-00268,
`
`Paper 17 at 5 (PTAB Apr. 10, 2015). In this event, Petitioner would coordinate
`
`with any other parties joined to the proceeding such that only one counsel would
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`assume the lead role and all petitioner parties would speak with a single voice.
`
`4.
`
`Joinder Will Not Impact the Board’s Ability to Complete
`the Review Within the One-Year Period
`
`Joinder in this case will not impact the Board’s ability to complete its review
`
`in a timely manner because of the complete overlap between the two petitions for
`
`the raised grounds. As discussed above, Petitioner will adhere to all applicable
`
`deadlines set forth in the Google IPR Scheduling Order and coordinate its
`
`approach and filings with Google. Furthermore, no additional expert discovery will
`
`be needed as the Petition relies on the same declaration from the same expert filed
`
`in the Google IPR. Thus, in the event that Google settles, Petitioner will be well-
`
`positioned to continue participating in this proceeding without any delay.
`
`The first deadline in the Google IPR is Patent Owner’s response to Google’s
`
`petition (37 C.F.R. § 42.120) and any motion to amend the patent (37 C.F.R. §
`
`42.121). Pursuant to the Scheduling Order in the Google IPR, this deadline is
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`currently set for March 12, 2019 – over seven weeks from the date of this motion.
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`IPR2018-01257, Paper 9 at 8 (PTAB Dec. 11, 2018). Should the Board grant
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`7
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`
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`Motion for Joinder; Inter Partes Review of U.S. Patent No. 8,552,978
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`Petitioner’s motion for joinder, Patent Owner will have ample time to complete its
`
`submissions by its deadline. And because Petitioner’s petition for inter partes
`
`review does not raise any new issues, Patent Owner’s Response will not require
`
`any analysis beyond what Patent Owner is already required to undertake to respond
`
`to Google’s petition. Also, Patent Owner has filed a Request for Rehearing on
`
`Decision to Institute, further mitigating any impact joinder may have on the
`
`schedule in the Google Petition. IPR2018-01257, Paper 10.
`
`In view of the above, Petitioner submits that the current schedule in the
`
`Google IPR can remain unchanged and that joinder will not affect the Board’s
`
`ability to complete its review and issue a final decision within the statutory time
`
`limits under 35 U.S.C. § 316(a)(11) and 37 C.F.R. § 42.100(c).
`
`5.
`
`Joinder Will Streamline the Proceedings, Reduce the Costs
`and Burdens on the Parties, and Increase Efficiencies for
`the Board Without Prejudicing the Parties
`
`Petitioner explicitly agrees to take an “understudy” role which will simplify
`
`briefing and discovery. Specifically, Petitioner agrees, upon joining the Google
`
`IPR, that the following conditions, as previously approved by the Board in similar
`
`circumstances, shall apply so long as the original petitioner remains an active
`
`party:
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`8
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`Motion for Joinder; Inter Partes Review of U.S. Patent No. 8,552,978
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`a) all filings by Petitioner in the joined proceeding will be consolidated with
`
`the filings of the original petitioner, unless a filing concerns issues solely involving
`
`Petitioner;
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`b) Petitioner shall not be permitted to raise any new grounds not already
`
`instituted by the Board in the Google IPR, or introduce any argument or discovery
`
`not already introduced by the original petitioner;
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`c) Petitioner shall be bound by any agreement between Patent Owner and the
`
`original petitioner concerning discovery and/or depositions; and
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`d) at deposition, Petitioner shall not receive any direct, cross examination or
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`redirect time beyond that permitted under either 37 C.F.R. § 42.53 or any
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`agreement between Patent Owner and the original petitioner.
`
`Granting joinder will not prejudice the parties or burden the Board. Rather,
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`joinder will promote judicial efficiency. As discussed above, the validity of the
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`‘978 Patent is squarely at issue in the Underlying Litigation and the Google IPR. A
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`final written decision on the validity of the challenged claims will simplify,
`
`minimize, or even entirely resolve, issues in the Underlying Litigation. If the
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`claims are invalidated in a final decision, the Underlying Litigation is greatly
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`simplified.
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`If the Board permits Petitioner to join the Google IPR and the
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`challenged claims are upheld in a final written decision, Petitioner may be
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`estopped from further challenging the validity of the claims on these grounds, thus
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`9
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`Motion for Joinder; Inter Partes Review of U.S. Patent No. 8,552,978
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`avoiding duplication of Patent Owner’s efforts in the litigation against Petitioner.
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`See 35 U.S.C. § 315(e)(2). Accordingly, regardless of the Board’s final decision,
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`joinder simplifies the issues and reduces duplicate efforts and the possibility of
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`inconsistencies.
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`The possibility of settlement between Patent Owner and Google, and
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`resulting impact on Petitioner if the Google IPR is terminated, further supports the
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`conclusion that joinder is appropriate. 35 U.S.C. § 317(a) provides that an inter
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`partes review “shall be terminated with respect to any petitioner upon the joint
`
`request of the petitioner and the patent owner” unless the Board has already
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`reached its decision on the merits, and if no petitioner remains after settlement,
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`“the Office may terminate the review.” Thus, if Patent Owner were to reach a
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`settlement with Google, the Google IPR may be terminated without proceeding to
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`a final written decision. If this were to occur, Petitioners would have to reargue in
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`district court litigation the exact same arguments on which the Board has already
`
`determined that Google is reasonably likely to prevail.
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`Finally, permitting joinder will not prejudice the parties to the Google IPR.
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`Petitioner raises no issues that are not already before the Board and agrees to
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`coordinate its filings and arguments with Google. Thus, neither Google nor Patent
`
`Owner will need to expend any additional resources beyond those required in the
`
`Google IPR. Indeed, because the Petition does not raise any new issues, joinder
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`10
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`Motion for Joinder; Inter Partes Review of U.S. Patent No. 8,552,978
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`will not require any additional analysis or otherwise affect the content of Patent
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`Owner’s Response. Further, Patent Owner will suffer no prejudice from joinder
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`because the IPR proceedings will provide a relatively inexpensive full and fair
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`opportunity to respond to the challenged claims in a venue that should proceed
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`more quickly than the litigation against Petitioner. See Sony Corp. v. Yissum
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`Research Development Co. of the Hebrew Univ. of Jerusalem, IPR2013-00326,
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`Paper 15 at 7 (PTAB Sept. 24, 2013).
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`II. CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that its Petition for
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`Inter Partes Review of U.S. Patent No. 8,552,978 be granted and that the
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`proceedings be joined with pending IPR proceeding IPR2018-01257.
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`Respectfully submitted,
`
`Dated: January 10, 2019
`
`/Collin W. Park/__________
`Collin W. Park
`Reg. No. 43,378
`1111 Pennsylvania Ave., N.W.
`Washington, DC 20004
`Phone: (202) 739-5516
`Fax: (202) 739-3001
`collin.park@morganlewis.com
`
`Counsel for Petitioner LG Electronics Inc.
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`11
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`Motion for Joinder; Inter Partes Review of U.S. Patent No. 8,552,978
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e) and 42.105(b), the undersigned certifies that
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`on January 10, 2019 a copy of this MOTION FOR JOINDER UNDER 37
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`C.F.R. §§ 42.22 AND 42.122(b) was served by Federal Express on the Patent
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`Owner’s counsel of record at the United States Patent & Trademark Office having
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`the following address:
`
`DING YU TAN
`8819 Purdy Crescent Trail
`Richmond TX 77406
`
`Dated: January 10, 2019
`
`/Collin W. Park/__________
`Collin W. Park
`Reg. No. 43,378
`
`- i -
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