`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`LG ELECTRONICS, INC.,
`Petitioner
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`v.
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`UNILOC 2017 LLC,
`Patent Owner.
`____________
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`Case IPR2019-01530
`U.S. Patent No. 6,993,049
`____________
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`PETITIONER’S MOTION FOR JOINDER
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`Proceeding No. IPR2019-01530
`Attorney Docket: 19688-0058IP1
`I. STATEMENT OF 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. (“LG” or “Petitioner”) moves for joinder with the Inter Partes
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`Review of U.S. Patent No. 6,993,049 (“the ’049 patent”), Apple Inc. v. Uniloc
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`2017 LLC, IPR2019-00251 (“the Apple IPR”), for which trial was instituted on
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`July 22, 2019. See IPR2019-00251, Paper 7. This motion is timely because it is
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`being filed within one month of institution of the Apple IPR. 37 C.F.R.
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`§ 42.122(b). Petitioner understands that the Petitioner in the Apple IPR (“the
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`Apple Petitioner”) does not oppose Petitioner’s request for joinder.
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`Petitioner requests institution of the Petition for Inter Partes Review being
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`filed concurrently herewith. The Petition is a copy of the original Apple IPR
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`petition in all material respects. The concurrently filed Petition and the Apple
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`IPR petition challenge the same claims of the ’049 patent on the same grounds
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`relying on the same prior art and evidence, including an identical declaration
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`from the same expert.1
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`Petitioner agrees to proceed solely on the grounds, evidence, and
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`arguments advanced, or that will be advanced, in the Apple IPR as instituted.
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`1 The expert declaration is an exact duplicate of the declaration filed in IPR2019-
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`00251.
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`1
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`Proceeding No. IPR2019-01530
`Attorney Docket: 19688-0058IP1
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`Thus, the Petition warrants institution under 35 U.S.C. § 314, and 35 U.S.C.
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`§ 315(c) permits Petitioner’s joinder to the Apple IPR.
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`Further, upon joining the Apple proceeding, Petitioner will act as an
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`“understudy” and will not assume an active role unless the Apple Petitioner ceases
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`to participate in the instituted IPR. The Apple Petitioner will maintain the lead role
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`in the proceeding so long as it is a party to the proceeding. Petitioner will only
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`assume the lead role in the proceeding if the Apple Petitioner is no longer a party
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`to the proceeding or is unable to advance arguments for one or more claims, or
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`grounds. Absent a Board order precluding the Apple Petitioner from making
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`arguments that would otherwise be available to Petitioner, Petitioner will not
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`advance any arguments separate from those advanced by the Apple Petitioner.
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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. Petitioner agrees to the
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`foregoing conditions even in the event that other IPRs filed by other, third-party
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`petitioners are joined with the Apple IPR. Accordingly, the proposed joinder will
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`neither unduly complicate the Apple IPR nor delay its schedule.
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`In fact, joinder will help efficiently resolve the disputes among the parties.
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`By joinder, a single Board decision may dispose of the issues raised in the Apple
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`IPR for all interested parties. Further, the Patent Owner has asserted the ’049
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`patent in district court against LG Electronics U.S.A., Inc., LG Electronics, Inc.,
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`and LG Electronics Mobilecomm U.S.A., Inc. Joinder will, thus, narrow the issues
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`Proceeding No. IPR2019-01530
`Attorney Docket: 19688-0058IP1
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`in the district court actions. See 35 U.S.C. § 315(e)(2). Finally, joinder would not
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`complicate or delay the Apple IPR, and would not adversely affect any schedule
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`set in that proceeding. In sum, joinder would promote efficient adjudication in
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`multiple forums.
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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 LG. Its interests may not be
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`adequately protected in the Apple IPR proceeding, 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 them.
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`II. BACKGROUND AND RELATED PROCEEDINGS
`Uniloc 2017 LLC (the “Patent Owner”) is the owner of the ’049 patent. The
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`Patent Owner asserted the ’049 patent against LG in Uniloc USA, Inc. et al v. LG
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`Electronics USA, Inc. et al 3-18-cv-00559 (N.D. Tex.) and Uniloc USA Inc. et
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`al v. LG Electronics USA Inc. et al 5-18-cv-06738 (N.D. Cal.) and against
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`Apple Inc., HTC, Motorola Mobility, ZTE, Inc., Blackberry Corporation,
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`Microsoft, Huawei, Logitech, and Samsung in the following cases: Uniloc
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`USA, Inc. et al v. Apple, Inc. 5-19-cv-01695 (N.D. Cal.); Uniloc 2017 LLC v.
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`3
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`HTC America, Inc. 2-18-cv-01727 (W.D. Wash.); Uniloc 2017 LLC v. Motorola
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`Proceeding No. IPR2019-01530
`Attorney Docket: 19688-0058IP1
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`Mobility, LLC 1-18-cv-01840 (D. Del.); Uniloc 2017 LLC v. ZTE, Inc. et al 3-18-
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`cv-03063 (N.D. Tex.); Uniloc 2017 LLC v. Blackberry Corporation 3-18-cv-
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`03068 (N.D. TEX.); Apple Inc. et al v. Uniloc 2017 LLC IPR2019-00251
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`(PTAB); Uniloc USA Inc. et al v. ZTE (USA) Inc. et al 3-18-cv-02839 (N.D.
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`TEX.); Uniloc 2017 LLC et al v. Microsoft Corporation 8-18-cv-01279 (C.D.
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`Cal.); Uniloc USA, Inc. et al v. ZTE (USA), Inc. et al 2-18-cv-00307 (E.D.
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`TEX.); Uniloc USA Inc. et al v. Blackberry Corporation 3-18-cv-01885 (N.D.
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`TEX.); Uniloc USA, Inc. et al v. Huawei Device USA, Inc. et al 2-18-cv-00074
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`(E.D. TEX.); Uniloc USA, Inc. et al v. Logitech Inc. et al 5-18-cv-01304 (N.D.
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`Cal.); Uniloc USA, Inc. et al v. Samsung Electronics America, Inc. et al 2-18-
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`cv-00040 (E.D. TEX.); and Uniloc USA, Inc. et al v. Apple Inc. 1-18-cv-00164
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`(W.D. Tex.). In addition, U.S. Patent No. 6,993,049 is the subject of an inter
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`partes review in Microsoft Corporation v. Uniloc 2017 LLC, IPR2019-01026, filed
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`June 6, 2019.
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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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`4
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`Yissum Res. & Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013- 00326, Paper
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`Proceeding No. IPR2019-01530
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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 bear
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`the burden of proof in establishing entitlement to the requested relief. 37 §§
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`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.
`Joinder with the Apple IPR is appropriate
`The Board “routinely grants motions for joinder where the party seeking
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`joinder introduces identical arguments and the same grounds raised in the existing
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`proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper
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`No. 12 at 9 (Aug. 24, 2016) (emphasis added) (internal quotations and citations
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`omitted). Here, joinder with the Apple IPR is appropriate because the LG Petition
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`introduces identical arguments and the same grounds raised in the existing Apple
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`IPR (i.e., they contain the same grounds (based on the same prior art combinations
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`and supporting evidence) against the same claims). Indeed, there are no changes to
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`Proceeding No. IPR2019-01530
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`the facts, citations, evidence, or arguments used by the Apple Petition in
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`demonstrating satisfaction of the implicated claims by the applied prior art.
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`Because these proceedings introduce identical arguments and the same grounds,
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`good cause exists for joining this proceeding with the Apple IPR so that the Board,
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`consistent with 37 C.F.R. § 42.1(b), can efficiently “secure the just, speedy, and
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`inexpensive resolution” of the LG and Apple Petitions.
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`Moreover, Petitioner notes that the Board has indicated that the factors
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`outlined by General Plastics are not particularly relevant here “where a different
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`petitioner files a ‘me-too’ or ‘copycat’ petition in conjunction with a timely motion
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`to join.” See, e.g., Celltrion, Inc. v. Genentech, Inc., IPR2018-01019, Paper 11 at
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`9-11 (PTAB Oct. 30, 2018); Pfizer, Inc. v Genentech, Inc., IPR2017-02063, Paper
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`25 at 7-8 (PTAB Feb. 21, 2018). The Apple IPR has already been instituted, and
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`joinder poses no new burden on Patent Owner. Moreover, through this motion to
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`join and corresponding petition, Petitioner has not modified positions advanced in
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`the other independent proceeding, i.e., IPR2019-00251, which was instituted. See,
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`e.g., Celltrion, IPR2018-01019, Paper 11 at 10-11 (finding Petitioner’s “copycat”
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`petition and motion to join an instituted IPR to “effectively obviate[] any concerns
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`of serial harassment and unnecessary expenditure of resources,” even though
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`Petitioner “previously filed two petitions directed to the same claims of the same
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`6
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`patent.”). Rather, through grant of this joinder, the Board is simply offered the
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`Proceeding No. IPR2019-01530
`Attorney Docket: 19688-0058IP1
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`opportunity to ensure that the instituted Apple IPR is not prematurely terminated
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`based on opportunistic settlement by Patent Owner with fewer than all parties
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`against which it has asserted the subject patent.
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`C.
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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 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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`is using the same expert, and has 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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`Joinder will not impact the Apple IPR trial schedule because the LG Petition
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`presents no new issues or grounds of unpatentability. See LG, IPR2015-01353,
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`Paper No. 11 at 6 (granting IPR and motion for joinder where “joinder should not
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`necessitate any additional briefing or discovery from Patent Owner beyond that
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`already required in [the original IPR]”). Further, Petitioner explicitly consents to
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`the existing trial schedule. There are no new issues for the Board to address, and
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`Patent Owner will not be required to present any additional responses or
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`arguments.
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`The Patent Owner’s Response will also not be negatively impacted because
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`the issues presented in the LG Petition are identical to the issues presented in the
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`Apple Petition. Patent Owner will not be required to provide any additional
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`analysis or arguments beyond what it will already provide in responding to the
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`petition in the Apple IPR. Also, because the LG Petition relies on the same expert
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`and the same declaration, only a single deposition is needed for the proposed
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`joined proceeding.
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`Accordingly, joinder with the Apple IPR does not unduly burden or
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`negatively impact the trial schedule.
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`D.
`Procedures to simplify briefing and discovery
`LG explicitly agrees to take an “understudy” role, which will simplify
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`briefing and discovery. Specifically, LG explicitly agrees, upon joining the Apple
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`proceeding, that the following conditions, as previously approved by the Board in
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`similar circumstances, shall apply so long as the current petitioner in IPR2019-
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`00251 remains an active party:
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`a) all filings by LG in the joined proceeding be consolidated with the
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`filings of the current petitioner, unless a filing concerns issues solely
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`involving LG;
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`b) LG shall not be permitted to raise any new grounds not already
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`instituted by the Board in the Apple IPR, or introduce any argument
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`or discovery not already introduced by the current petitioner;
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`c) LG shall be bound by any agreement between Patent Owner and the
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`current petitioner concerning discovery and/or depositions; and
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`d) LG at deposition 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
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`any agreement between Patent Owner and the current petitioner.
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`See Noven Pharmaceuticals, Inc. v. Novartis AG, IPR2014-00550, Paper No.
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`38 at 5 (Apr. 10, 2015). Unless and until the current petitioner ceases to participate
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`in the instituted IPR proceeding, LG will not assume an active role therein.
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`Thus, by LG accepting an “understudy” role, Patent Owner and the current
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`petitioner can comply with the existing trial schedule without needing any
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`duplicative efforts by the Board or the Patent Owner. These steps minimize the
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`possibility of any complication or delay from joinder. See LG, IPR2015-01353,
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`9
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`Paper No. 11 at 6-7 (granting IPR and motion for joinder because “joinder would
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`Proceeding No. IPR2019-01530
`Attorney Docket: 19688-0058IP1
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`increase efficiency by eliminating duplicative filings and discovery, and would
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`reduce costs and burdens on the parties as well as the Board” where petitioners
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`agreed to an “understudy” role). LG is further willing to agree to any other
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`reasonable conditions the Board deems necessary.
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`IV. THIS MOTION FOR JOINDER IS NOT AFFECTED BY THE CLAIM
`CONSTRUCTION RULE CHANGE
`The final rule implementing the change in claim construction standard from
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`the BRI standard to the standard articulated in Phillips does not impact this motion
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`for joinder. The final rule indicates that the Office will “continue to apply the BRI
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`standard for construing unexpired patent claims and proposed substituted claims
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`for AIA proceedings where a petition was filed before the effective date of the
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`final rule.” 83 Fed. Reg. 51340, 51344 (Oct. 11, 2018) (emphasis added). The
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`Apple Petition was filed before the effective date of the final rule, and, with this
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`motion for joinder, LG seeks to be joined as a co-petitioner to that proceeding. See
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`35 U.S.C. § 315(c) (“join as a party to that inter partes review”). As is customary,
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`granting of this motion would result in LG being “joined as a petitioner in that case
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`[i.e., the Apple Petition] pursuant to 37 C.F.R. § 42.122” and the dismissal of LG's
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`copy-cat petition (i.e., IPR2019-01530) pursuant to 37 C.F.R. § 42.71(a). See, e.g.,
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`Samsung Electronics America, Inc. v. Uniloc 2017 LLC, IPR2018-01383, Paper 9
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`10
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`at 6 (PTAB Nov. 19, 2018) (emphasis added). Thus, the rules applicable to the
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`Proceeding No. IPR2019-01530
`Attorney Docket: 19688-0058IP1
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`Apple Petition (e.g., the BRI claim construction standard) remain unchanged, as
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`“that case” will proceed and this copy-cat petition will be dismissed.
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`Indeed, the Board has previously considered this issue and found that the
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`change in claim construction standard does not prevent joinder where the initial
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`petition was filed before the change and the copycat petition was filed after the
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`change. See, e.g., LG Electronics Inc. v. Cywee Group LTD., IPR2019-00559,
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`Paper 21 at pp. 34-35 (PTAB 2019)(“Because the petitioner in the related IPR filed
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`its petition prior to the date the Board changed the claim construction standard it
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`uses in trial proceedings, the related IPR will continue to use the broadest
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`reasonable interpretation, regardless of the joinder of any parties to that
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`proceeding.”); Priceline.com LLC et al. v. DDR Holdings, LLC, IPR2019-00439,
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`Paper 9 at p. 10 (PTAB 2019)(“We agree with Petitioner that ‘joinder of the
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`Petition with the [related IPR] will not prejudice Patent Owner in any way as the
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`[related IPR] has already been instituted under the broadest reasonable
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`interpretation standard and using a plain and ordinary meaning standard would not
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`adversely impact Patent Owner.’”); Pfizer Inc. v. Sanofi-Aventis Deutschland
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`GMBH, IPR2019-00980, Paper 12 at p. 8 (PTAB 2019)(“we will construe any
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`claim term that requires construction according to the broadest reasonable
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`interpretation standard. If, however, any party contends that a claim term should be
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`11
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`given a different interpretation from the broadest reasonable interpretation under
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`Proceeding No. IPR2019-01530
`Attorney Docket: 19688-0058IP1
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`the federal court claim construction standard used in a civil action under 35 U.S.C.
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`§ 282(b), that party may request authorization to file an additional brief in support
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`of its contentions.”). Thus, the change in claim construction standard does not
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`impact this motion for joinder.
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`V. 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. 6,993,049 and joinder with Apple Inc. v. Uniloc 2017
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`LLC, IPR2019-00251.
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`Dated: August 22, 2019
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`Respectfully submitted,
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`/W. Karl Renner/
`W. Karl Renner, Reg. No. 41,265
`Jeremy J. Monaldo, Reg. No. 58,680
`Roberto J. Devoto, Reg. No. 55,108
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-626-5070, F: 877-769-7945
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`Attorneys for Petitioner
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`(Control No. IPR2019-01530)
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`12
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`Proceeding No. IPR2019-01530
`Attorney Docket: 19688-0058IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e), the undersigned certifies that on August 22,
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`2019, a complete and entire copy of this Motion for Joinder was provided via
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`FedEx, to the Patent Owner by serving the correspondence address of record as
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`follows:
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`Philips Intellectual Property & Standards
`465 Columbus Avenue
`Suite 340
`Valhalla, NY 10595
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`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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