UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner
`
`v.
`
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
`____________
`
`Case IPR2020-00108
`U.S. Patent No. 8,416,862
`____________
`
`
`PETITIONER’S MOTION FOR JOINDER
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`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner
`
`v.
`
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
`____________
`
`Case IPR2020-00108
`U.S. Patent No. 8,416,862
`____________
`
`
`PETITIONER’S MOTION FOR JOINDER
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`
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`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
`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”) and its real parties in interest1 move for
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`joinder with the Inter Partes Review of U.S. Patent No. 8,416,862 (“the ’862
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`patent”), Huawei Technologies Co., Ltd. v. Bell Northern Research, LLC,
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`IPR2019-01439 (“the Huawei IPR”), which was filed on August 2, 2019. See
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`IPR2019-01439, Paper 2. This motion is timely because it is being filed before
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`the Board has reached a decision on institution in the Huawei IPR. 37 C.F.R.
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`§ 42.122(b).
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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 Huawei IPR
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`petition in all material respects. The concurrently-filed Petition and the Huawei
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`IPR petition challenge the same claims of the ’862 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.2
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`1 LG Electronics, Inc., LG Electronics U.S.A., Inc. and LG Electronics Mobile
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`Research U.S.A., LLC are real parties in interest, as identified in the Petition.
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`2 The expert declaration is an exact duplicate of the declaration filed in IPR2019-
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`01439.
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`1
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`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
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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 Huawei IPR. Thus, the
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`Petition warrants institution under 35 U.S.C. § 314, and joinder to the Huawei
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`IPR under 35 U.S.C. § 315(c).
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`Further, upon joining the Huawei proceeding, Petitioner will act as an
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`“understudy” and will not assume an active role unless the Huawei Petitioner
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`ceases to participate in the IPR, such as in the instance the Huawei Petitioner
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`settles with Patent Owner. The Huawei Petitioner will maintain the lead role in the
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`proceeding so long as it is a party to the proceeding. Petitioner will only assume
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`the lead role in the proceeding if the Huawei Petitioner is no longer a party to the
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`proceeding or is unable to advance arguments for one or more claims, or grounds.
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`Absent a Board order precluding the Huawei Petitioner from making arguments
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`that would otherwise be available to Petitioner, Petitioner will not advance any
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`arguments separate from those advanced by the Huawei Petitioner. These
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`limitations will avoid lengthy and duplicative briefing. Also, Petitioner will not
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`seek additional depositions or deposition time. Petitioner agrees to the foregoing
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`conditions even in the event that other IPRs filed by other, third-party petitioners
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`are joined with the Huawei IPR. Accordingly, the proposed joinder will neither
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`unduly complicate the Huawei IPR nor delay its schedule.
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`2
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`In fact, joinder will help efficiently resolve the disputes among the parties.
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`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
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`
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`By joinder, a single Board decision may dispose of the issues raised in the Huawei
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`IPR for all interested parties. Further, the Patent Owner has asserted the ’862
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`patent in district court against LG Electronics, Inc., LG Electronics U.S.A., Inc.,
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`and LG Electronics Mobile Research U.S.A., LLC. Joinder will, thus, narrow the
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`issues in the district court actions. See 35 U.S.C. § 315(e)(2). Finally, joinder
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`would not complicate or delay the Huawei IPR, and would not adversely affect any
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`schedule set in that proceeding. In sum, joinder would promote efficient
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`adjudication in 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 Petitioner. Its interests may not
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`be adequately protected in the Huawei IPR proceeding, particularly if the Huawei
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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
`Bell Northern Research, LLC (the “Patent Owner”) is the purported owner of
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`the ’862 patent. The Patent Owner asserted the ’862 patent against Petitioner in
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`Bell Northern Research, LLC v. LG Electronics, Inc., et al., Case No. 3:18-cv-
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`3
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`02864 (S.D. Cal.), which was filed with the District Court on Dec. 20, 2018.
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`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
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`Patent Owner has also asserted the ’862 against other parties, including the Huawei
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`Petitioner, in the following actions:
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` Bell Northern Research, LLC v. Huawei Technologies Co., Ltd., et al.,
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`Case No. 3:18-cv-1784 (S.D. Cal.) – filed Aug. 1, 2018,
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` Bell Northern Research, LLC v. Kyocera Corporation, et al., Case No.
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`3:18-cv-1785 (S.D. Cal.) – filed Aug. 1, 2018, and
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` Bell Northern Research, LLC v. ZTE Corporation, et al., Case No. 3:18-
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`cv-1786 (S.D. Cal.) – filed Aug. 1, 2018.
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`In addition, U.S. Patent No. 8,416,862 is the subject of the following inter
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`partes review:
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` ZTE (USA) Inc., et al. v. Bell Northern Research, LLC, IPR2019-01438
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`(“Huawei IPR”) – filed August 2, 2019, and
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` Huawei Technologies Co., Ltd., v. Bell Northern Research, LLC,
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`IPR2019-01439 (“Huawei IPR”) – filed August 2, 2019.
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`The Huawei IPR (IPR2019-01439) raises grounds, evidence, and issues that
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`are different from those raised in the ZTE IPR (IPR2019-01438). See Huawei,
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`IPR2019-01439, Paper No. 2; ZTE (USA), IPR2019-01438, Paper No. 1.
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`4
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`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
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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 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 Huawei 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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`5
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`proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper
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`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
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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 Huawei IPR is appropriate because the LG
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`Petition introduces identical arguments and the same grounds raised in the existing
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`Huawei IPR (i.e., they contain the same grounds (based on the same prior art
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`combinations and supporting evidence) against the same claims). Indeed, there are
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`no changes to the facts, citations, evidence, or arguments used by the Huawei
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`Petition in demonstrating satisfaction of the implicated claims by the applied prior
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`art. Because these proceedings introduce identical arguments and the same
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`grounds, good cause exists for joining this proceeding with the Huawei IPR so that
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`the Board, consistent with 37 C.F.R. § 42.1(b), can efficiently “secure the just,
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`speedy, and inexpensive resolution” of the LG and Huawei Petitions.
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`Moreover, Petitioner notes that the Board has indicated that the factors
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`outlined by General Plastic 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 Huawei IPR has not yet been instituted, and
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`joinder poses no new burden on Patent Owner. Indeed, the Patent Owner has not
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`filed its Patent Owner’s Preliminary Response. Moreover, through this motion to
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`6
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`join and corresponding petition, Petitioner has not modified positions advanced in
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`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
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`the other independent proceeding, i.e., IPR2019-01439, which is currently awaiting
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`the Boards institution decision. See, e.g., Celltrion, IPR2018-01019, Paper 11 at
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`10-11 (finding Petitioner’s “copycat” petition and motion to join an instituted IPR
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`to “effectively obviate[] any concerns of serial harassment and unnecessary
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`expenditure of resources,” even though Petitioner “previously filed two petitions
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`directed to the same claims of the same patent.”). Rather, through grant of this
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`joinder, the Board is simply offered the opportunity to ensure that the Huawei IPR
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`is not prematurely terminated based on opportunistic settlement by Patent Owner
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`with fewer than all parties 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 IPR schedule
`The Petition is based on the same grounds and combinations of prior art that
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`the Board will consider in deciding whether to institute the Huawei IPR. For
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`simplicity and efficiency, Petitioner has copied the substance of Huawei’s petition
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`and accompanying declaration. Petitioner does not seek to introduce grounds or
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`claims not in the Huawei IPR and seeks only to join the proceeding as set forth in
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`the Huawei IPR. Petitioner is using the same expert, and has submitted an
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`identical declaration as in the Huawei IPR. The Patent Owner should not require
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`any discovery beyond that which it may need in the Huawei IPR—nor should the
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`Board permit any. The petition presents no new substantive issues relative to the
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`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
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`Huawei IPR and does not seek to broaden the scope of the Huawei IPR.
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`Joinder will not impact the Huawei IPR schedule because the LG Petition
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`presents no new issues or grounds of unpatentability. See Sony Corp., et al. v.
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`Memory Integrity, LLC, IPR2015-01353, Paper No. 11 at 6 (granting IPR and
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`motion for joinder where “joinder should not necessitate any additional briefing or
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`discovery from Patent Owner beyond that already required in [the original IPR]”).
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`Further, Petitioner explicitly consents to a trial schedule provided by the Board
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`upon institution of the Huawei IPR. There are no new issues for the Board to
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`address, and Patent Owner will not be required to present any additional responses
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`or 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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`Huawei 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 Huawei IPR. Also, because the LG Petition relies on the same
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`expert and the same declaration, only a single deposition is needed for the
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`proposed joined proceeding.
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`Accordingly, joinder with the Huawei IPR does not unduly burden or
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`negatively impact the Huawei IPR schedule.
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`8
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`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
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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
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`Huawei proceeding, that the following conditions, as previously approved by the
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`Board in similar circumstances, shall apply so long as the current petitioner in
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`IPR2019-01439 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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`presented in the Huawei IPR, or introduce any argument or discovery
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`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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`9
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`See Noven Pharmaceuticals, Inc. v. Novartis AG, IPR2014-00550, Paper No. 38 at
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`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
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`5 (Apr. 10, 2015). Unless and until the current petitioner ceases to participate in
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`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 IPR 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 Sony Corp., IPR2015-
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`01353, Paper No. 11 at 6-7 (granting IPR and motion for joinder because “joinder
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`would increase efficiency by eliminating duplicative filings and discovery, and
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`would reduce costs and burdens on the parties as well as the Board” where
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`petitioners agreed to an “understudy” role). LG is further willing to agree to any
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`other reasonable conditions the Board deems necessary.
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`IV. CONCLUSION
`Joinder will not affect the substance, procedure, or scheduling of the Huawei
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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. 8,416,862 and joinder with Huawei Technologies Co.,
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`Ltd. v. Bell Northern Research, LLC, IPR2019-01439.
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`Dated: November 12, 2019
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`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
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`Respectfully submitted,
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`/Timothy W. Riffe/
`Timothy W. Riffe
`Reg. No. 43,881
`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. IPR2020-00108)
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`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e), the undersigned certifies that on November
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`12, 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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`Foley & Lardner LLP/ Broadcom Corporation
`3000 K Street N.W.
`Suite 600
`Washington DC 20007-5109
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`/Edward G. Faeth/
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`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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`
`
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