`Filed: March 8, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS INC.
`Petitioner
`v.
`CYWEE GROUP LTD.
`Patent Owner
`
`Case No. IPR2019-00560
`Patent No. 8,552,978
`
`PETITIONER’S REPLY IN SUPPORT OF
`MOTION FOR JOINDER WITH INTER PARTES REVIEW IPR2018-01257
`
`
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`LG’s Reply in Support of Motion for
`Joinder with Case No. IPR2018-01257
`
`I.
`II.
`III.
`
`TABLE OF CONTENTS
`INTRODUCTION…………………………………………………………. 1
`JOINDER WILL NOT PREJUDICE PATENT OWNER.............................2
`JOINDER WILL NOT ADVERSELY IMPACT TRIAL SCHEDULE .......4
`A.
`Joinder Will Not Introduce New Claim Construction Issues ..............4
`B.
`CyWee Has Not Identified a Genuine Real Party-in Interest
`(“RPI”) Issue Implicated by LG’s Joinder...........................................5
`VI. CONCLUSION ..............................................................................................5
`
`i
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`
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`LG’s Reply in Support of Motion for
`Joinder with Case No. IPR2018-01257
`
`TABLE OF AUTHORITIES
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`Cases
`Samsung Electronics America, Inc. v. Uniloc 2017 LLC,
`IPR2017-01797, Paper 8 (Feb. 6, 2018)..............................................................3
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`Page(s)
`
`Unified Patents, Inc. v. Realtime Adaptive Streaming, LLC,
`IPR2018-00883, Paper 29 (Oct. 11, 2018) ..........................................................5
`
`Statutes
`35 U.S.C. § 315(c)......................................................................................................4
`
`ii
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`
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`LG’s Reply in Support of Motion for
`Joinder with Case No. IPR2018-01257
`
`I.
`
`INTRODUCTION
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`Petitioner LG Electronics Inc. (“Petitioner” or “LG”) has filed a copy-cat
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`petition to join the already-instituted inter partes review IPR2018-01257 (“Google
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`IPR”) against the same patent claims on the same unpatentability grounds using
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`the same expert declaration. Petitioner has explicitly agreed to an “understudy”
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`role. Joinder in such a scenario is entirely appropriate and consistent with the
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`Board’s well-settled joinder practice.
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`CyWee raises two arguments in its opposition, each of which rings hollow.
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`First, there is no cognizable prejudice to CyWee. CyWee’s arguments regarding
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`LG taking an active role in the proceeding is pure conjecture. Second, joinder will
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`not impact the trial schedule because LG’s petition raises no new issues and LG
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`will act as an understudy, unless Google drops out as a Petitioner. CyWee’s
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`suggestion that joinder will raise new claim construction issues is meritless
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`because LG’s petition adopts the claim construction positions in Google’s petition
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`and if LG is joined as a party to the Google IPR, the claim construction standard
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`applicable to that proceeding should continue to apply. CyWee’s unsupported
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`contention that it will need to seek discovery regarding real parties-in-interest if
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`LG is joined is perplexing.
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`Indeed, any delay caused by a CyWee motion for
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`additional discovery would be a problem of its own making and cannot justify
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`denying joinder.
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`1
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`
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`LG’s Reply in Support of Motion for
`Joinder with Case No. IPR2018-01257
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`II.
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`JOINDER WILL NOT PREJUDICE PATENT OWNER
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`LG’s commitment to proceed in the Google IPR as an “understudy” shows
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`that there will not be any prejudice to CyWee resulting from LG’s joinder. See
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`Paper No. 2 (“Mot.”) at 6-7. Regardless of whether LG is joined, CyWee will face
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`a patentability challenge based on the same prior art by Google. See Paper No. 6
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`(“Opp.”) at 7 (conceding “LG does not present any new grounds of
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`unpatentability”). LG only seeks to join so that, in the event the original Petitioner
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`Google cannot continue, LG can assume a leading role. See Mot. at 7.
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`In response, CyWee only offers unsupported conspiracy theories. Opp. at 4-
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`6. CyWee asserts without basis that “it is unfathomable that … LG ... will truly
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`take an ‘understudy’ role.” Opp. at 4. Such unsupported disbelief fails to address
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`any of the substantive limitations that LG has agreed to as a condition for joinder,
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`Mot. at 6-7, and fails to suggest any additional conditions CyWee believes would
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`be necessary to minimize its alleged prejudice.
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`CyWee’s complaint of prejudice appears to be grounded in its belief that
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`joinder will somehow result in CyWee having to “face the combined resources and
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`efforts of all of the petitioners.” Opp. at 4. CyWee’s concern is unfounded
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`because under the Board’s practice, each joined party must assume an understudy
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`role, a condition that LG explicitly agreed to in its Motion and reaffirms here.
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`CyWee cannot credibly complain of having to face multiple Petitioners when it is
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`2
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`
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`LG’s Reply in Support of Motion for
`Joinder with Case No. IPR2018-01257
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`CyWee’s own litigation activity against them that has prompted multiple
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`Petitioners to challenge its patent. Samsung Electronics America, Inc. v. Uniloc
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`2017 LLC, IPR2017-01797, Paper 8 at 33 (Feb. 6, 2018).
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`CyWee also suggests that joinder must be denied here so that the Board is
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`not “overwhelmed” by joinder petitions. Opp. at 4. But the joinder requests here
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`and in the three other related proceedings are straightforward, and ruling on four
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`joinder petitions is well within the capabilities of the Board, particularly because
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`the arguments in support of joinder are similar—a fact that CyWee acknowledges.
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`Opp. at 5.1
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`In addition, CyWee argues that LG should not be permitted to rely on U.S.
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`Patent App. Pub. 2004/0095317 to Zhang (“Zhang”) through joinder to the Google
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`IPR because LG allegedly did not identify Zhang in its invalidity contentions in the
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`related district court action between the parties. Opp. at 2. This argument fails for
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`at least two reasons. First, it is factually wrong. In its invalidity contentions, LG
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`incorporated by reference the prior art and invalidity grounds set forth in, among
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`1 The fact that the joinder briefs are similar is neither surprising nor inappropriate.
`Indeed, a party’s reliance on previously-filed, public motions as a template makes
`perfect sense as a cost-saving measure and demonstrates the efficiencies to be
`gained by granting joinder.
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`3
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`
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`LG’s Reply in Support of Motion for
`Joinder with Case No. IPR2018-01257
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`others, the Google IPR, which included Zhang. 2 Second, even if, arguendo,
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`CyWee’s argument were factually correct, which it is not, CyWee’s argument still
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`fails because it is based on a false requirement for joinder. Indeed, CyWee cites to
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`no authority suggesting that to join the Google IPR, LG must have relied on the
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`same prior art used in the Google IPR in the related district court litigation.
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`III.
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`JOINDER WILL NOT ADVERSELY IMPACT TRIAL SCHEDULE
`CyWee also asserts that joinder of LG to Google’s IPR would introduce
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`“new issues” that “could” lead to shifts in the trial schedule. Opp. at 6-9.
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`CyWee’s arguments lack merit.
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`A.
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`Joinder Will Not Introduce New Claim Construction Issues
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`CyWee initially contends—while citing no authority—that joinder will
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`introduce new claim construction issues because LG’s joinder petition was filed
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`after the Board switched to the Phillips standard. Opp. at 7-8. However, because
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`LG’s petition will be dismissed after joinder under the Board’s current practice, the
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`BRI standard should continue to apply in the Google IPR.3 35 U.S.C. § 315(c)
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`(“Director ... may join as a party to that inter partes review”) (emphasis added).
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`2 Petitioner does not submit a copy of its voluminous invalidity contentions in the
`related district court litigation as an exhibit, but would be happy to submit it should
`the Board believe it would be useful in deciding the motion for joinder.
`3 Indeed, LG has already consented to the Board’s constructions in instituting the
`Google IPR. Paper No. 1 (“Petition”) at 13. Also, even if the Philips standard is
`deemed to apply to LG’s Petition, LG submitted in its Petition that the appropriate
`constructions would be the same. Id.
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`4
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`
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`LG’s Reply in Support of Motion for
`Joinder with Case No. IPR2018-01257
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`CyWee does not dispute that no new claim construction issues arise if the BRI
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`standard continues to be applied in the Google IPR after LG’s joinder.
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`B.
`
`CyWee Has Not Identified a Genuine Real Party-in-Interest
`(“RPI”) Issue Implicated by LG’s Joinder
`CyWee contends that joinder by “Samsung, Huawei, LG, or ZTE will
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`necessitate additional discovery to determine what other unknown makers of
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`Android-based devices are RPIs to the Google IPR.” Opp. at 9 (emphasis added).
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`First, it is perplexing why LG’s joinder would result in additional RPI discovery in
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`“the Google IPR.” Id. Even if, arguendo, CyWee had any factual basis for its
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`unsupported assertion that several unnamed parties are RPIs to Google’s petition,
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`the proper recourse would be for CyWee to seek discovery in the Google IPR
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`regardless of LG’s joinder. Second, CyWee’s assertion that Motorola or any
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`unnamed phone manufacturers whose products “utilize the Google Android
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`operating system” may have “an interest in the outcome of this proceeding,” Opp.
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`at 8, even if assumed true, is legally insufficient to convert any such party into an
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`RPI. Unified Patents, Inc. v. Realtime Adaptive Streaming, LLC, IPR2018-00883,
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`Paper 29 at 15 (Oct. 11, 2018) (finding aligned interests to be insufficient).
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`VI. CONCLUSION
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`For the foregoing reasons, LG respectfully requests that the Board
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`institute the LG petition and grant joinder with the Google IPR.
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`5
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`
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`Dated: March 8, 2019
`
`By:
`
`LG’s Reply in Support of Motion for
`Joinder with Case No. IPR2018-01257
`
`Respectfully submitted,
`
`/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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`6
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`
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`LG’s Reply in Support of Motion for
`Joinder with Case No. IPR2018-01257
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on March 8, 2019, I caused a true and correct copy
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`of the foregoing Reply in Support of Petitioner’s Motion for Joinder with Inter
`
`Partes Review IPR2018-01257 to be served by electronic mail upon the
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`following:
`
`Jay P. Kesan - jkesan@dimuro.com
`Cecil E. Key - ckey@dimuro.com
`Arlen Papazian - apapazian@dimuro.com
`DimuroGinsberg PC
`
`A courtesy copy was also served electronically upon counsel of record for
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`Petitioner Google LLC in Google LLC v. Cywee Group Ltd., IPR2018-01257 at
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`the following addresses:
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`Matthew A. Smith - smith@smithbaluch.com
`Andrew S. Baluch - baluch@smithbaluch.com
`Christopher M. Colice - colice@smithbaluch.com
`SMITH BALUCH LLP
`
`By:
`
`/Collin W. Park/
`Collin W. Park (Reg. No. 43,378)
`
`