`
`
`Filed: December 12, 2019
`
`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 No. IPR2020-00108
`U.S. Patent No. 8,416,862
`___________________
`
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER
`
`
`
`
`TABLE OF CONTENTS
`
`
`
`I.
`
`INTRODUCTION .......................................................................................... 1
`
`STATEMENT OF MATERIAL FACTS ....................................................... 4
`
`II.
`III. ARGUMENTS ............................................................................................... 5
`A. There is No Instituted Proceeding for LG to Join. ......................................... 5
`B. Granting LG’s Motion Prejudices Patent Owner’s Reliance on Stated
`Board Policy. .................................................................................................. 9
`C. The Denial of its Joinder Request Would Not Result in Prejudice to LG. .. 11
`CONCLUSION ............................................................................................ 12
`
`IV.
`
`
`
`
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Cellitron, Inc., v. Genentech, Inc.,
`IPR2018-01019, Paper 3 (PTAB May 4, 2018) ..................................................... 7
`Celltrion, Inc. v. Genentech, Inc.,
`IPR2018-01019, Paper 11 (PTAB Oct. 30, 2018) ................................................. 6
`Choirock Contents Factory Co., Ltd. v. Spin Master Ltd.,
`IPR2019-00897, Paper 17 (PTAB Sept. 26, 2019) ................................................ 8
`
`Linear Tech. Corp. v. In-Depth Test LLC,
`IPR2015-01994, Paper 7 (PTAB Oct. 20, 2015) ................................................... 6
`Pfizer Inc., v. Genentech, Inc.,
`IPR2017-01923, Paper 14 (PTAB May 4, 2018) ................................................... 7
`Samsung Elecs. Co., Ltd. v. Raytheon Co.,
`IPR2016-00962, Paper 12 (Aug. 24, 2016) ........................................................... 6
`STMicroElectronics, Inc. v. Semcon IP Inc.,
`IPR2017-01432, Paper 10 (PTAB Jan. 24, 2018) .................................................. 8
`Ubisoft, Inc. v. Uniloc USA Inc.,
`IPR2016-00414, Paper 16 (PTAB June 2, 2016) ................................................... 8
`ZTE (USA) LLC v. Seven Networks, LLC,
`IPR2019-00460, Paper 18 (PTAB June 6, 2019) ................................................... 8
`Statutes
`35 U.S.C. § 314(a) ................................................................................................... 10
`35 U.S.C. § 315 ......................................................................................................2, 5
`Regulations
`37 C.F.R. § 42.1(b) .................................................................................................... 7
`
`
`
`ii
`
`
`
`I.
`
`INTRODUCTION
`Patent Owner Bell Northern Research, LLC (“BNR” or “Patent Owner”)
`
`opposes Petitioner LG Electronics, Inc.’s (“LG” or “Petitioner”) motion for joinder
`
`(IPR2020-00182, Paper 3 (“LG Mot.”)) seeking to join Huawei Technologies Co.,
`
`Ltd. v. Bell Northern Research, LLC, IPR2019-01439 (“the Huawei IPR”).
`
`As an initial matter, there are key facts pertaining to the Huawei IPR that LG
`
`neglected to tell the Board. On October 23, 2019, after court-supervised mediation
`
`between Patent Owner and Huawei, those parties settled the then-pending litigation
`
`between them in its entirety, including Patent Owner’s lawsuit regarding the ’862
`
`Patent. It is a near certainty that LG knew of the settlement because, not only was
`
`there a publicly filed order by the district court stating that the case had settled, LG
`
`and Huawei are represented by the same law firm. Thus, LG, recognizing that
`
`the Huawei settlement would likely mean that the parties agreed to request
`
`termination of all IPR proceedings Huawei had initiated, sought to “skip the line”
`
`and join the Huawei proceeding in an attempt to ensure that it would continue
`
`despite the likely impending termination motions. This is the only explanation for
`
`LG’s motion, because if LG had a true interest in joining the Huawei IPR for the
`
`reasons it claims in its brief, it would have either filed a joinder motion months
`
`ago—the Huawei IPR was filed in August 2019, and Patent Owner’s litigation
`
`against LG has been pending since December 2018—or would have waited until
`
`
`
`1
`
`
`
`an institution decision, which is what the statute contemplates and is the most
`
`common in practice.
`
`However, notwithstanding LG’s true motivation for its joinder motion, LG
`
`fails to put forth a sufficient showing that joinder is warranted or justified. First, as
`
`a threshold issue, the Huawei IPR must be instituted before LG can join that
`
`proceeding. The joinder statute requires that institution of a proceeding is a
`
`condition precedent before a party later filing a petition under section 311 may
`
`join as a party. See 35 U.S.C. § 315(c). But the Huawei IPR has not been
`
`instituted. Moreover, the probability of the Huawei IPR being instituted is low
`
`because the parties in the Huawei IPR jointly moved to terminate the Huawei IPR
`
`following settlement. See IPR2019-01439, Paper No. 7 (filed Dec. 6, 2019). While
`
`Patent Owner recognizes that the Board has the discretion despite the parties’
`
`preferences, the Board’s practice with respect to other cases and including other
`
`IPRs that Huawei filed is that the Board accepts the parties’ requests and
`
`terminates the proceeding. See IPR2019-01172, Paper 15 (termination decision);
`
`IPR2019-01175, Paper 15 (termination decision). And to the extent LG’s motion
`
`seeks to influence the proceedings in the Huawei IPR, such interference is
`
`inappropriate and does not independently warrant maintaining the Huawei IPR.
`
`Without the Huawei IPR, LG’s joinder motion is moot and properly denied on this
`
`
`
`2
`
`
`
`basis alone. Further, none of the efficiencies that LG outlines would be realized in
`
`a scenario where the Huawei IPR is not instituted.
`
`Second, LG’s claim that Patent Owner would suffer “no prejudice” is
`
`demonstrably false. In reliance on its settlement with Huawei on October 23,
`
`Patent Owner did not file a Patent Owner Preliminary Response (which was due on
`
`November 8) in the Huawei IPR because the parties agreed to file a joint motion to
`
`terminate the Huawei IPR. Again, there is a strong inference that LG knew of this
`
`fact because it shares counsel with Huawei, and sought to take advantage of it
`
`through its ill-timed joinder motion, filed a mere few days after the POPR
`
`deadline.
`
`Finally, LG has filed its own IPR petition in this proceeding, which exists
`
`independently of the Huawei IPR, and will proceed on the schedule set by the
`
`Board’s rules and practice guide. LG filed its Petition within the one year period,
`
`and thus that Petition would proceed according to the ordinary course. Patent
`
`Owner fully intends to file a Preliminary Response in that proceeding because
`
`there is no settlement of dispute with LG. There is no reason to permit LG to
`
`“jump in line” and step into Huawei’s shoes and take over as a result of the
`
`settlement.
`
`
`
`3
`
`
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`The following timeline illustrates the timing of events that led to LG’s
`
`motion:
`
` Dec. 27, 2018 – LG was served with Patent Owner’s Complaint in the
`
`Southern District of California, Case No. 3:18-cv-02864, asserting
`
`infringement of the ’862 Patent by LG. (Ex. 2001.)
`
` Aug. 2, 2019 – The Huawei IPR was filed.
`
` Oct. 23, 2019 –Huawei and Patent Owner settled their litigation (see
`
`Ex. 2002), including the ’862 Patent, and agreed to jointly move to
`
`terminate all IPR proceedings filed by Huawei against Patent Owner,
`
`including but not limited to the Huawei IPR.
`
` Nov. 8, 2019 – Deadline by which Patent Owner would have filed a
`
`preliminary response (“POPR”) in the Huawei IPR, but for the
`
`settlement with Huawei.
`
` Nov. 12, 2019 – LG filed its petition in IPR2020-00182 against the
`
`’862 Patent, together with its motion for joinder with the Huawei IPR.
`
`(Papers 2 and 3, respectively).
`
` Dec. 2, 2019 – The final written settlement agreement between
`
`Huawei and Patent Owner was executed.
`
`
`
`4
`
`
`
` Dec. 3, 2019 – The District Court dismissed the pending litigation
`
`between Huawei and Patent Owner. (Ex. 2003.)
`
` Dec. 5, 2019 – After reviewing the parties’ December 2, 2019 request
`
`for authorization, Board authorized filing the joint motions to
`
`terminate the Huawei IPR, along with the fully executed written
`
`agreement.
`
` Dec. 7, 2019 – Patent Owner and Huawei filed their joint motion to
`
`terminate the Huawei IPR proceeding. (IPR2019-01439, Paper 7).
`
`III. ARGUMENTS
`A. There is No Instituted Proceeding for LG to Join.
`LG’s joinder motion requires, as a condition precedent, that the Board first
`
`institute Huawei’s IPR2019-01439. There are least two reasons related to this
`
`condition that support denial of LG’s motion.
`
`First, the Huawei IPR is not instituted. The plain text of the joinder statute
`
`requires the existence of an instituted proceeding for a requestor to join. See 35
`
`U.S.C. § 315(c) (“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
`
`
`
`5
`
`
`
`under section 314.”) (emphasis added); see also, e.g., Linear Tech. Corp. v. In-
`
`Depth Test LLC, IPR2015-01994, Paper 7 at 4 (PTAB Oct. 20, 2015) (“It is clear
`
`from both the statute and the rule that a request for joinder is appropriate only if
`
`a decision granting institution has been entered in the inter partes review for
`
`which joinder is requested… we note that in the cases cited by Petitioner in
`
`support of its Motion for Joinder, the requests were for joinder with an inter partes
`
`review in which trial already had been instituted.” (emphasis added)).1 Since there
`
`is no institution decision for the Huawei IPR, LG’s motion is, at best, premature.
`
`
`1 LG’s motion relies on Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-
`
`00962, Paper 12 at 9 (Aug. 24, 2016). (See LG Mot. at 5-6.) However, even in
`
`Samsung, the joinder motion at issue was filed after the institution of an earlier
`
`proceeding. See id. at 4 (“The Petition and Motion for Joinder in this proceeding
`
`were accorded a filing date of April 28, 2016. See Paper 6. Thus, Petitioner’s
`
`Motion for Joinder is timely because joinder was requested no later than one month
`
`after the institution date of the Sony 209 IPR, i.e., March 29, 2016.”). Likewise, in
`
`Celltrion, Inc. v. Genentech, Inc., IPR2018-01019, Paper 11 (PTAB Oct. 30,
`
`2018), another case cited by the petitioner, the motion for joinder was filed after
`
`the institution of the earlier proceeding. (Compare Cellitron, IPR2018-01019,
`
`
`
`6
`
`
`
`Not only is there no currently instituted proceeding to join, it is likely that
`
`when the Board acts on the pending joint motion to terminate the Huawei IPR,
`
`LG’s motion will become moot. See IPR2019-01439, Paper 7 (joint request to
`
`terminate). Indeed, the Board recently terminated other proceedings between
`
`Patent Owner and Huawei related to the same settlement agreement between those
`
`parties. See IPR2019-01172, Paper 15 (termination decision); IPR2019-01175,
`
`Paper 15 (termination decision). This is consistent with conducting PTAB
`
`proceedings “to secure the just, speedy, and inexpensive resolution of
`
`every proceeding.” 37 C.F.R. § 42.1(b). Since the Huawei IPR is not instituted,
`
`terminating the Huawei IPR and denying LG’s joinder request promotes the strong
`
`public policy favoring settlement between parties in IPR proceedings, and is
`
`consistent with the Board’s stated practice: “the Board expects that a proceeding
`
`will terminate after the filing of a settlement agreement, unless the Board has
`
`already decided the merits of the proceeding.” See Office Trial Practice Guide, 77
`
`Fed. Reg. 48756 at 48768.
`
`Further, the Board routinely denies motions for joinder after the earlier IPR
`
`with which joinder was requested terminated. See, e.g., Choirock Contents Factory
`
`
`Paper 3 (Motion for Joinder dated May 4, 2018) with Pfizer Inc., v. Genentech,
`
`Inc., IPR2017-01923, Paper 14 (Institution Decision dated May 4, 2018.).)
`
`
`
`7
`
`
`
`Co., Ltd. v. Spin Master Ltd., IPR2019-00897, Paper 17 at 36 (PTAB Sept. 26,
`
`2019) (“Because the proceeding which Petitioner seeks to join has been terminated
`
`and is no longer pending before the Board, we deny Petitioner’s Motion for
`
`Joinder.”); ZTE (USA) LLC v. Seven Networks, LLC, IPR2019-00460, Paper 18 at
`
`7 (PTAB June 6, 2019) (“Given that the Samsung IPR has been terminated, there is
`
`no proceeding for ZTE to join. Hence, ZTE’s argument that joinder with the
`
`Samsung IPR would be appropriate is also unavailing.”); Ubisoft, Inc. v. Uniloc
`
`USA Inc., IPR2016-00414, Paper 16 at 5 (PTAB June 2, 2016) (“Because
`
`IPR2015-01207 is no longer pending, it cannot serve as a proceeding to which
`
`another proceeding may be joined. We, therefore, must deny Petitioner’s Motion
`
`for Joinder.”).
`
`
`
`Second, LG argues that the primary justification for joinder results from
`
`overlapping, identical issues, and the resulting efficiencies allegedly realized if
`
`both the LG and Huawei IPRs were instituted and joined. (See LG Mot. at 5-8.)
`
`However, if the Huawei IPR is not instituted, any purported efficiencies would not
`
`materialize, and LG’s primary argument for joinder disappears. See, e.g.,
`
`STMicroelectronics, Inc. v. Semcon IP Inc., IPR2017-01432, Paper 10 at 8 (PTAB
`
`Jan. 24, 2018) (denying motion for joinder due to Patent Owner and third party
`
`filing a joint motion to terminate IPR with which joinder is requested, because: “If
`
`
`
`8
`
`
`
`the motion to terminate is granted, there are no efficiencies to be gained by joining
`
`the present proceeding to a proceeding that will be terminated.”)
`
`Accordingly, absent institution of the Huawei IPR, LG’s motion to join the
`
`Huawei IPR must be denied.
`
`B. Granting LG’s Motion Prejudices Patent Owner’s Reliance on
`Stated Board Policy.
`LG ignores the grave and undue prejudice to Patent Owner that would result
`
`from joinder. Relying on its settlement with Huawei, Patent Owner did not file a
`
`Patent Owner Preliminary Response in the Huawei IPR because the parties agreed
`
`to file a joint motion to terminate the Huawei IPR. Had there been no settlement,
`
`Patent Owner would have filed a POPR. It would be highly prejudicial to Patent
`
`Owner, and against existing policy, to allow LG to take over the Huawei IPR at
`
`this stage.
`
`As mentioned above, the Board has stated that it “expects that a proceeding
`
`will terminate after the filing of a settlement agreement, unless the Board has
`
`already decided the merits of the proceeding.” See Office Trial Practice Guide, 77
`
`Fed. Reg. 48756 at 48768. Patent Owner relied on this stated policy in abstaining
`
`from filing a Preliminary Response with the expectation that the Huawei IPR will
`
`likely terminate shortly after the filing of the joint motion to terminate. While
`
`Patent Owner recognizes that such a motion does not guarantee termination, the
`
`Board should not disregard Huawei and Patent Owner’s joint motion in view of
`
`
`
`9
`
`
`
`LG’s joinder request. Permitting LG to take over a non-instituted proceeding under
`
`these facts undermine the strong policy of litigants resolving their differences. If
`
`parties must continue to spend time, money, and resources drafting filings to guard
`
`against the possibility of a later third party taking over a settling IPR proceeding,
`
`the value of settling disputes among litigants is diminished. Granting LG’s motion
`
`would incentivize third parties to interfere with settlement proceedings, eroding the
`
`confidence in the predictability of such agreements.
`
`Further, to the extent LG filed its motion in an attempt to influence the
`
`institution or termination of the Huawei IPR, the Board should reject such tactics.
`
`The possibility of some third party benefiting from institution of an IPR is not a
`
`proper reason for institution under the plain language of the statute: “The Director
`
`may not authorize an inter partes review to be instituted unless the Director
`
`determines that the information presented in the petition filed under section 311
`
`and any response filed under section 313 shows that there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” 35 U.S.C. § 314(a). The “petition” here is
`
`Huawei’s petition, which Huawei has expressed a desire to withdraw in the parties’
`
`joint motion. LG has no role—nor should it—in whether the Board should institute
`
`review.
`
`
`
`10
`
`
`
`Finally, LG’s statement that “joinder would not complicate or delay the
`
`Huawei IPR, and would not adversely affect any schedule set in that proceeding” is
`
`incorrect. LG’s motion, if credited, would complicate the Huawei IPR proceedings
`
`in light of the joint motion to terminate. It would further adversely impact Patent
`
`Owner by forcing it to participate in the proceeding despite Patent Owner and
`
`Huawei’s agreement to end that matter, and Patent Owner would likely be forced
`
`to seek relief (e.g., permission to file a POPR past the deadline) from the Board as
`
`a result.
`
`C. The Denial of its Joinder Request Would Not Result in Prejudice
`to LG.
`LG claims that it will be prejudiced if not permitted to join because “[i]ts
`
`interests may not be adequately protected in the Huawei IPR proceeding,
`
`particularly if the Huawei Petitioner settles with the Patent Owner.” (LG Mot. at
`
`3.) This statement is perplexing because, as explained above, it Huawei had
`
`already settled as of the date of LG’s filing and LG’s feigned ignorance of that
`
`fact is not credible. Indeed, in the very next sentence LG demonstrates that it is
`
`interested in any “proceeding affecting a patent asserted against them [sic].” (Id.)
`
`The Huawei matter is undoubtedly such a proceeding, and it is highly improbable
`
`that LG did not know Huawei had settled before it sought joinder.
`
`LG also asserts that the Board should “ensure that the Huawei IPR is not
`
`prematurely terminated based on opportunistic settlement by Patent Owner with
`
`
`
`11
`
`
`
`fewer than all parties against which it has asserted the subject patent.” (LG Mot. at
`
`7.) LG offers no authority for this bold statement. LG is not entitled to rely on
`
`other parties to advance its own litigation and IPR-related positions. Moreover, it is
`
`unclear what LG even means by this statement—a settlement with one party on a
`
`particular patent does not mean that the party must settle with all other parties that
`
`may have that patent asserted against them. Indeed, it is LG’s opportunism here—
`
`seeking to take advantage Patent Owner’s reasonable reliance on its settlement
`
`with Huawei—that would inflict harm on Patent Owner.
`
`Unlike the common scenario wherein a petitioner files a petition after the
`
`statutory one-year deadline of 35 U.S.C. §315(b), and petitioner can only proceed
`
`with any IPR if petitioner successfully joins an earlier-filed IPR petition, LG filed
`
`its own IPR petition in the instant proceeding challenging the ’862 patent.
`
`Accordingly, there is no need for LG to “leapfrog” and step into Huawei’s shoes in
`
`Huawei’s earlier-filed, non-instituted, and likely-to-be-terminated proceeding.
`
`Since LG’s Petition was filed within its statutory one-year deadline to initiate
`
`proceedings under 35 U.S.C. §315(b), there is no prejudice if LG continues in the
`
`ordinary course, without joinder.
`
`IV. CONCLUSION
`For the foregoing reasons, Patent Owner respectfully requests the Board
`
`deny Petitioner’s Motion for Joinder.
`
`
`
`12
`
`
`
`Respectfully Submitted,
`
`/Steven W. Hartsell/
`Steven W. Hartsell (Reg. No. 58,788)
`SKIERMONT DERBY LLP
`1601 Elm St., Ste. 4400
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6601
`Lead Counsel for Patent Owner
`
`Alexander E. Gasser (Reg. No. 48,760)
`Sarah E. Spires (Reg. No. 61,501)
`SKIERMONT DERBY LLP
`1601 Elm St., Ste. 4400
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6621
`Back-Up Counsel for Patent Owner
`
`Dated: December 12, 2019
`
`
`
`
`
`
`
`
`
`
`13
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
`
`counsel for Petitioner a true and correct copy of the foregoing Patent Owner’s
`
`Opposition to Petitioner’s Motion for Joinder, by electronic means on December
`
`12, 2019 at the following addresses of record:
`
`Respectfully Submitted,
`
`/Steven W. Hartsell/
`Steven W. Hartsell (Reg. No. 58,788)
`Lead Counsel for Patent Owner
`
`Timothy W. Riffe
`Christopher C. Hoff
`R. Andrew Schwentker
`PTABInbound@fr.com
`IPR18768-0186IP2@fr.com
`riffe@fr.com
`
`
`Dated: December 12, 2019
`
`
`
`
`
`
`
`
`
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