Paper No.
`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
`
`
`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
`
`
`
`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
`
`
`
`LG’s Reply in Support of Motion for
`Joinder with Case No. IPR2018-01257
`
`TABLE OF AUTHORITIES
`
`Cases
`Samsung Electronics America, Inc. v. Uniloc 2017 LLC,
`IPR2017-01797, Paper 8 (Feb. 6, 2018)..............................................................3
`
`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
`
`
`
`LG’s Reply in Support of Motion for
`Joinder with Case No. IPR2018-01257
`
`I.
`
`INTRODUCTION
`
`Petitioner LG Electronics Inc. (“Petitioner” or “LG”) has filed a copy-cat
`
`petition to join the already-instituted inter partes review IPR2018-01257 (“Google
`
`IPR”) against the same patent claims on the same unpatentability grounds using
`
`the same expert declaration. Petitioner has explicitly agreed to an “understudy”
`
`role. Joinder in such a scenario is entirely appropriate and consistent with the
`
`Board’s well-settled joinder practice.
`
`CyWee raises two arguments in its opposition, each of which rings hollow.
`
`First, there is no cognizable prejudice to CyWee. CyWee’s arguments regarding
`
`LG taking an active role in the proceeding is pure conjecture. Second, joinder will
`
`not impact the trial schedule because LG’s petition raises no new issues and LG
`
`will act as an understudy, unless Google drops out as a Petitioner. CyWee’s
`
`suggestion that joinder will raise new claim construction issues is meritless
`
`because LG’s petition adopts the claim construction positions in Google’s petition
`
`and if LG is joined as a party to the Google IPR, the claim construction standard
`
`applicable to that proceeding should continue to apply. CyWee’s unsupported
`
`contention that it will need to seek discovery regarding real parties-in-interest if
`
`LG is joined is perplexing.
`
`Indeed, any delay caused by a CyWee motion for
`
`additional discovery would be a problem of its own making and cannot justify
`
`denying joinder.
`
`1
`
`
`
`LG’s Reply in Support of Motion for
`Joinder with Case No. IPR2018-01257
`
`II.
`
`JOINDER WILL NOT PREJUDICE PATENT OWNER
`
`LG’s commitment to proceed in the Google IPR as an “understudy” shows
`
`that there will not be any prejudice to CyWee resulting from LG’s joinder. See
`
`Paper No. 2 (“Mot.”) at 6-7. Regardless of whether LG is joined, CyWee will face
`
`a patentability challenge based on the same prior art by Google. See Paper No. 6
`
`(“Opp.”) at 7 (conceding “LG does not present any new grounds of
`
`unpatentability”). LG only seeks to join so that, in the event the original Petitioner
`
`Google cannot continue, LG can assume a leading role. See Mot. at 7.
`
`In response, CyWee only offers unsupported conspiracy theories. Opp. at 4-
`
`6. CyWee asserts without basis that “it is unfathomable that … LG ... will truly
`
`take an ‘understudy’ role.” Opp. at 4. Such unsupported disbelief fails to address
`
`any of the substantive limitations that LG has agreed to as a condition for joinder,
`
`Mot. at 6-7, and fails to suggest any additional conditions CyWee believes would
`
`be necessary to minimize its alleged prejudice.
`
`CyWee’s complaint of prejudice appears to be grounded in its belief that
`
`joinder will somehow result in CyWee having to “face the combined resources and
`
`efforts of all of the petitioners.” Opp. at 4. CyWee’s concern is unfounded
`
`because under the Board’s practice, each joined party must assume an understudy
`
`role, a condition that LG explicitly agreed to in its Motion and reaffirms here.
`
`CyWee cannot credibly complain of having to face multiple Petitioners when it is
`
`2
`
`
`
`LG’s Reply in Support of Motion for
`Joinder with Case No. IPR2018-01257
`
`CyWee’s own litigation activity against them that has prompted multiple
`
`Petitioners to challenge its patent. Samsung Electronics America, Inc. v. Uniloc
`
`2017 LLC, IPR2017-01797, Paper 8 at 33 (Feb. 6, 2018).
`
`CyWee also suggests that joinder must be denied here so that the Board is
`
`not “overwhelmed” by joinder petitions. Opp. at 4. But the joinder requests here
`
`and in the three other related proceedings are straightforward, and ruling on four
`
`joinder petitions is well within the capabilities of the Board, particularly because
`
`the arguments in support of joinder are similar—a fact that CyWee acknowledges.
`
`Opp. at 5.1
`
`In addition, CyWee argues that LG should not be permitted to rely on U.S.
`
`Patent App. Pub. 2004/0095317 to Zhang (“Zhang”) through joinder to the Google
`
`IPR because LG allegedly did not identify Zhang in its invalidity contentions in the
`
`related district court action between the parties. Opp. at 2. This argument fails for
`
`at least two reasons. First, it is factually wrong. In its invalidity contentions, LG
`
`incorporated by reference the prior art and invalidity grounds set forth in, among
`
`
`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.
`
`3
`
`
`
`LG’s Reply in Support of Motion for
`Joinder with Case No. IPR2018-01257
`
`others, the Google IPR, which included Zhang. 2 Second, even if, arguendo,
`
`CyWee’s argument were factually correct, which it is not, CyWee’s argument still
`
`fails because it is based on a false requirement for joinder. Indeed, CyWee cites to
`
`no authority suggesting that to join the Google IPR, LG must have relied on the
`
`same prior art used in the Google IPR in the related district court litigation.
`
`III.
`
`JOINDER WILL NOT ADVERSELY IMPACT TRIAL SCHEDULE
`CyWee also asserts that joinder of LG to Google’s IPR would introduce
`
`“new issues” that “could” lead to shifts in the trial schedule. Opp. at 6-9.
`
`CyWee’s arguments lack merit.
`
`A.
`
`Joinder Will Not Introduce New Claim Construction Issues
`
`CyWee initially contends—while citing no authority—that joinder will
`
`introduce new claim construction issues because LG’s joinder petition was filed
`
`after the Board switched to the Phillips standard. Opp. at 7-8. However, because
`
`LG’s petition will be dismissed after joinder under the Board’s current practice, the
`
`BRI standard should continue to apply in the Google IPR.3 35 U.S.C. § 315(c)
`
`(“Director ... may join as a party to that inter partes review”) (emphasis added).
`
`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.
`
`4
`
`
`
`LG’s Reply in Support of Motion for
`Joinder with Case No. IPR2018-01257
`
`CyWee does not dispute that no new claim construction issues arise if the BRI
`
`standard continues to be applied in the Google IPR after LG’s joinder.
`
`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
`
`necessitate additional discovery to determine what other unknown makers of
`
`Android-based devices are RPIs to the Google IPR.” Opp. at 9 (emphasis added).
`
`First, it is perplexing why LG’s joinder would result in additional RPI discovery in
`
`“the Google IPR.” Id. Even if, arguendo, CyWee had any factual basis for its
`
`unsupported assertion that several unnamed parties are RPIs to Google’s petition,
`
`the proper recourse would be for CyWee to seek discovery in the Google IPR
`
`regardless of LG’s joinder. Second, CyWee’s assertion that Motorola or any
`
`unnamed phone manufacturers whose products “utilize the Google Android
`
`operating system” may have “an interest in the outcome of this proceeding,” Opp.
`
`at 8, even if assumed true, is legally insufficient to convert any such party into an
`
`RPI. Unified Patents, Inc. v. Realtime Adaptive Streaming, LLC, IPR2018-00883,
`
`Paper 29 at 15 (Oct. 11, 2018) (finding aligned interests to be insufficient).
`
`VI. CONCLUSION
`
`For the foregoing reasons, LG respectfully requests that the Board
`
`institute the LG petition and grant joinder with the Google IPR.
`
`5
`
`
`
`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.
`
`6
`
`
`
`LG’s Reply in Support of Motion for
`Joinder with Case No. IPR2018-01257
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on March 8, 2019, I caused a true and correct copy
`
`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
`
`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
`
`Petitioner Google LLC in Google LLC v. Cywee Group Ltd., IPR2018-01257 at
`
`the following addresses:
`
`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)
`
`
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