`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`ROKU, INC.,
`Petitioner
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner
`
`
`_____________________
`
`Case Nos. IPR2020-00951 and IPR2020-00953
`Patent 9,911,325
`_____________________
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c)
`AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,911,325
`
`
`TABLE OF CONTENTS
`
`
`
`I.
`
`II.
`III.
`
`INTRODUCTION AND STATEMENT OF THE PRECISE RELIEF
`REQUESTED ............................................................................................... 1
`STATEMENT OF MATERIAL FACTS ...................................................... 2
`STATEMENT OF REASONS FOR RELIEF REQUESTED ....................... 3
`A.
`Same party or same issue joinder is appropriate in view of the
`Supreme Court’s recent decision in Thryv. .......................................... 5
`Joinder is justified under Proppant Express in light of Patent
`Owner’s late reassertion of the challenged claims. .............................. 8
`Joinder will have, at most, a minimal impact on the trial
`schedule and costs for the existing IPR. .............................................10
`Petitioner will facilitate procedures to simplify briefing and
`discovery. ..........................................................................................11
`IV. CONCLUSION .......................................................................................... 12
`
`
`B.
`
`C.
`
`D.
`
`
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`- i -
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`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,911,325
`
`
`I.
`
`INTRODUCTION AND STATEMENT OF THE PRECISE RELIEF
`REQUESTED
`Petitioner, Roku, Inc. (“Roku”), respectfully requests joinder pursuant to 35
`
`U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) of the concurrently filed Petitions for
`
`inter partes review (“IPR”) of U.S. Patent No. 9,911,325 (“the ’325 patent”),
`
`IPR2020-00951 (“Roku’s Second Petition”) and IPR2020-00953 (“Roku’s Third
`
`Petition”) with its pending inter partes review, IPR2019-01614, also of the ’325
`
`patent (“Roku’s First Petition”).
`
`Joinder is appropriate because it will promote efficient resolution of the
`
`validity of the ’325 patent. Roku’s Second Petition raises new issues only in
`
`response to Patent Owner’s addition of 9 newly asserted claims in an ITC
`
`investigation filed 19 months after the district court action that prompted Roku’s
`
`First Petition of the ’325 patent. Roku’s Third Petition challenges a subset of these
`
`claims based on the priority date of the ’325 patent. The Board maintains the
`
`discretion to grant a same-party or new-issue joinder in light of the Supreme
`
`Court’s recent decision in Thryv, Inc. v. Click-to-Call Tech, LP, 140 S. Ct. 1367
`
`(2020), and the Board’s precedential opinion in Proppant Express Investments v.
`
`Oren Techs., LLC, IPR2018-00914, Paper 38 (P.T.A.B. Mar. 13, 2019). There will
`
`be, at most, a minimal impact on the trial schedule in Roku’s First Petition.
`
`Petitioner further identifies procedures to simplify briefing and discovery.
`
`
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`- 1 -
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`
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`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,911,325
`
`Therefore, joinder would not unduly delay the pending IPR2019-01614 proceeding
`
`beyond what is authorized by 35 U.S.C. §§ 316(a)(11), where the Director may, for
`
`good cause, extend IPR deadlines in the case of joinder under § 315(c) .
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`On September 18, 2018, Patent Owner served Petitioner with a district court
`
`complaint alleging infringement of, among others, the ’325 patent. On December
`
`24, 2018, Patent Owner served infringement contentions in the district court
`
`litigation asserting, in relevant part, claims 1, 2, 4, and 7 of the ’325 patent. On
`
`March 14, 2019, the district court granted Petitioner’s request that Patent Owner
`
`select a subset of its asserted claims across the six patents-in-suit. In response, on
`
`April 5, 2019, Patent Owner elected to only proceed on claim 2 of the ’325 patent.
`
`On September 18, 2019, Petitioner filed a petition for inter partes review
`
`challenging claims 1, 2, 3, 4, 5, and 7 of the ’325 patent. On April 16, 2020, the
`
`Board instituted trial in IPR2019-01614. Thus, under 37 C.F.R. § 42.122(b), any
`
`request for joinder must be filed as a motion no later than one month after the
`
`institution date, i.e., May 18, 2020.
`
`On April 16, 2020, Patent Owner filed an ITC complaint under 19 U.S.C.
`
`§ 1337 against Petitioner. Among the claims asserted in the ITC complaint, Patent
`
`Owner newly introduced claims 6, 8, 9, and 11-16 of the ’325 patent, which were
`
`never asserted in the district court case. Roku’s First Petition thus does not
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`
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`- 2 -
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`
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`challenge these claims. Because Patent Owner’s ITC investigation comes over 18
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,911,325
`
`
`months after its civil action, Petitioner is now past the one-year statutory bar set
`
`forth in 35 U.S.C. § 315(b) to file an IPR against those claims, unless a motion for
`
`joinder is granted. See 35 U.S.C. § 315(b) (“The time limitation set forth in the
`
`preceding shall not apply to a request for joinder under subsection (c).”).
`
`At the time Patent Owner filed its belated ITC complaint, Petitioner was not
`
`permitted to prepare a second IPR petition on the ’325 patent on the newly asserted
`
`but unchallenged claims and seek joinder. That path had been foreclosed by the
`
`Federal Circuit’s decision in Facebook, Inc. v. Windy City Innovations, LLC, 953
`
`F.3d 1313, 1322 (Fed. Cir. 2020), which overturned the Board’s decision in
`
`Proppant Express Investments v. Oren Techs., LLC, IPR2018-00914, Paper 38 at 4
`
`(P.T.A.B. Mar. 13, 2019), which had previously allowed same party/new issue
`
`joinder. However, on April 20, about a month before Petitioner’s deadline to file a
`
`motion for joinder, the Supreme Court issued its decision in Thryv, which
`
`effectively abrogated the Federal Circuit’s decision in Windy City. The Director
`
`thus maintains its discretion under Proppant to allow same party/new issue joinder.
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`The Leahy-Smith America Invents Act (“AIA”) permits joinder of IPR
`
`proceedings. The statutory provision governing joinder of post-grant review
`
`proceedings is 35 U.S.C. § 315(c):
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`- 3 -
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`
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`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,911,325
`
`
`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 under section 314.
`
`The Office rules provide that, “[w]here another matter involving the patent
`
`is before the Office, the Board may during the pendency of the inter partes review
`
`enter any appropriate order regarding the additional matter including providing for
`
`the stay, transfer, consolidation, or termination of any such matter.” 37 C.F.R. §
`
`42.122(a). Under Rule 122, “[t]he Board will determine whether to grant joinder
`
`on a case-by-case basis, taking into account the particular facts of each case,
`
`substantive and procedural issues, and other considerations.” Dell Inc. v. Network-
`
`1 Security Solutions, Inc., IPR2013-00385, Paper 17 at 3 (citing 157 CONG. REC.
`
`S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl)). Further, “[t]he Board’s
`
`rules for AIA proceedings ‘shall be construed to secure the just, speedy, and
`
`inexpensive resolution of every proceeding.’” Trulia, Inc. v. Zillow Inc.,
`
`CBM2014-00115, Paper 8 at 19 (citing 37 C.F.R. § 42.1(b); 77 Fed. Reg. at
`
`48,758).
`
`Petitioner’s Motion for Joinder is thus the direct result of two rapidly
`
`converging events. First, it is the result of Patent Owner’s assertion on April 16,
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`- 4 -
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`
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`2020, of previously unasserted claims not challenged in Petitioner’s first IPR on
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,911,325
`
`
`the ’325 patent, in an ITC investigation launched over 18 months after the district
`
`court action. Second, it is the result of the Supreme Court’s April 20, 2020,
`
`decision in Thryv, which abrogates the Federal Circuit’s decision in Windy City,
`
`and thus restores the Director’s discretion to interpret 35 U.S.C. § 315(c) to allow
`
`same party/different issue joinder. We address Thryv first, and Proppant Express
`
`second.
`
`A.
`
`Same party or same issue joinder is appropriate in view of the
`Supreme Court’s recent decision in Thryv.
`The Board has authority to join a properly-filed IPR petition to a pending
`
`IPR proceeding. See 35 U.S.C. § 315(c). Under § 315(c), the Board has the
`
`discretion to allow a petitioner to be joined to a proceeding in which it is already a
`
`party. Section 315(c) also “provides discretion to allow joinder of new issues into
`
`an existing proceeding.” Proppant Express, IPR2018-00914, Paper 38 at 4. While
`
`the Federal Circuit held in Windy City that the Board’s interpretation of § 315(c) is
`
`incorrect and § 315(c) does not authorize same-party or new issue joinder, the
`
`Supreme Court’s recent decision in Thryv constructively abrogates the Federal
`
`Circuit’s decision in Windy City. Thryv, 140 S. Ct. at 1373. In Thryv, the Supreme
`
`Court held that the Federal Circuit lacks appellate jurisdiction to review issues that
`
`are “closely tied to the application and interpretation of statutes related to” the
`
`
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`- 5 -
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`
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`institution decision. Id. Since the Federal Circuit was not permitted to review the
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,911,325
`
`
`issue it decided in Windy City, the Patent Trial and Appeal Board is not bound to
`
`follow Windy City. The Board’s precedential decision in Proppant Express
`
`therefore controls whether same-party joinder is available to petitioners outside the
`
`one-year bar.
`
`In Thryv, the Supreme Court held that 35 U.S.C. § 314(d) “bars review at
`
`least of matters ‘closely tied to the application and interpretation of statutes related
`
`to’ the institution decision.” Thryv, 140 S. Ct. at 1373 (quoting Cuozzo Speed
`
`Tech., LLC v. Lee, 136 S. Ct. 2131 at 2141–42 (2016)). While the Supreme Court
`
`specifically addressed review of a challenge under 35 U.S.C. § 315(b), the Court’s
`
`holding extends to review of challenges under § 315(c). Similar to § 315(b),
`
`§ 315(c) is closely tied to Director’s institution decision. While clarifying what
`
`institution decisions are non-appealable under § 314(d), the Court compared the
`
`language of § 315(b) to the language of § 315(c). According to the Court,
`
`Section 314(d) is not limited to “the determination about whether there is a
`
`reasonable likelihood that the petitioner would prevail. Rather, it encompasses the
`
`entire determination whether to institute an inter partes review.” Id. at 1375
`
`(internal quotations and citations omitted).
`
`Furthermore, the Supreme Court explained that “every decision to institute is
`
`made ‘under’ § 314 but must take account of specifications in other provisions—
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`- 6 -
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`
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`such as the § 312(a)(3) particularity requirement at issue in Cuozzo and the
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,911,325
`
`
`§ 315(b) timeliness requirement at issue here.” Id. at 1375. The Court noted that
`
`“[s]imilar clarifying language recurs throughout the AIA. See, e.g., § 315(c)
`
`(referring to the Director’s determination regarding ‘the institution of an inter
`
`partes review under section 314’ (emphasis added)).” Id. Consequently, just as the
`
`Federal Circuit lacks authority to review the Director’s decision under § 315(b), it
`
`also lacks the authority to review decisions under § 315(c).
`
`Accordingly, the Federal Circuit lacked jurisdiction to review the issue of
`
`same-party joinder under § 315(c) raised in Windy City. Since appellate review of
`
`decisions under § 315(c) is barred under § 314(d) and under the Supreme Court’s
`
`ruling in Thryv, the Director is not bound to follow Windy City.1 Thus, the Director
`
`maintains discretion to interpret § 315(c), and the precedential decision in
`
`Proppant Express controls whether same-party joinder is available to petitioners.
`
`
`1 A Petition for rehearing is pending in Windy City. See Facebook, Inc. v.
`
`Windy City Innovations, LLC, Case No. 18-1400, ECF No. 100 (Fed. Cir., filed
`
`Apr. 17, 2020).
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`- 7 -
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`
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`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,911,325
`
`
`B.
`
`Joinder is justified under Proppant Express in light of Patent
`Owner’s late reassertion of the challenged claims.
`Patent Owner’s late assertion of claims 6, 8, 9, and 11-16 in its ITC
`
`complaint filed on April 16, 2020, justifies the Board exercising its discretion
`
`under 35 U.S.C. § 315(c) and granting this Motion for Joinder. Roku’s Second
`
`Petition does not advance a change in claim construction and relies on substantially
`
`the same prior art and the same expert witness as Roku’s First Petition. Similarly,
`
`Roku’s Third Petition does not advance any change in claim construction, relies on
`
`the same expert witness ,and advances a single prior art reference—Chardon—that
`
`was also asserted against Patent Owner in the instituted IPR2019-01615
`
`proceeding related to U.S. Patent No. 9,716,853 and involving the same parties.
`
`The Board has discretion under 35 U.S.C. § 315(c) to allow a petitioner to be
`
`joined to a proceeding in which it is already a party and to allow joinder of new
`
`issues into an existing procedure. Proppant Express, IPR2018-00914, Paper 38 at
`
`4. In determining whether to allow a same-party or new-issue joinder, the Board
`
`will “balance various considerations, including those raised by other statutes such
`
`as the time bar of § 315(b),” and will “exercise this discretion only in limited
`
`circumstances—namely, where fairness requires it and to avoid undue prejudice to
`
`a party.” Id.
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`- 8 -
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`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,911,325
`
`
`Circumstances leading to the narrow exercise of the Board’s discretion
`
`include “actions taken by a patent owner in a co-pending litigation such as the late
`
`addition of newly asserted claims.” Id.; see also Facebook, Inc. v. Windy City
`
`Innovations, LLC, IPR2017-00709, DI, Paper 11; IPR2017-00655, DI, Paper 8
`
`(The Board granting multiple Motions for Joinder and instituting multiple petitions
`
`by the same party against the same patent). That fact pattern is unambiguously
`
`present here. See Section II, supra.
`
`Mistakes or omissions of a petitioner, such as failing to make out a proper
`
`case for institution in the petition, generally do not implicate fairness and prejudice
`
`concerns. Proppant Express, IPR2018-00914, Paper 38 at 4. But petitioner Roku
`
`made no mistakes or omissions in its First Petition for inter partes review of the
`
`’325 patent. It reasonably covered each claim that was then-asserted in the district
`
`court action, plus clearly related claims easily incorporated into the asserted
`
`grounds. Roku was not required at that time to anticipate that, over 18 months
`
`later, Patent Owner would initiate an ITC investigation against Roku on the claims
`
`of the ’325 patent that Patent Owner had dropped from the district court case.
`
`The Board will also consider the “conduct of the parties and attempts to
`
`game the system” when deciding whether to allow same-party joinder. Id. at 19.
`
`Here, it is Patent Owner who attempts to game the system by delaying its ITC
`
`filing for over 18 months after launching its civil action against Roku. Due to
`
`
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`- 9 -
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`
`
`Patent Owner’s extended delay in filing its ITC complaint, Petitioner is now past
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,911,325
`
`
`the one-year statutory bar set forth in 35 U.S.C. § 315(b). Denying joinder would
`
`therefore allow Patent Owner to game the system and insulate the claims asserted
`
`only in its ITC complaint from an IPR challenge. To promote fairness and prevent
`
`undue prejudice, the Board should grant Petitioner’s Motion for Joinder.
`
`C.
`
`Joinder will have, at most, a minimal impact on the trial schedule
`and costs for the existing IPR.
`Joinder will have minimal impact on the trial schedule and costs for Roku’s
`
`First Petition. Roku’s Second Petition relies on significantly overlapping art as
`
`presented in its First Petition. Roku is using the same expert for both petitions, Dr.
`
`Samuel Russ, and Dr. Russ’s declaration in Roku’s Second Petition is identical to
`
`his first declaration, but for the addition of his analysis of the one new independent
`
`claim and eight new dependent claims. Roku is also not taking any new claim
`
`construction positions in its Second Petition. To summarize, Roku’s Second
`
`Petition is identical to its First Petition, except that it substitutes its analysis of
`
`dependent claims 2-5 and 7 in the First Petition with its analysis of independent
`
`claim 9 and dependent claims 6, 8, and 11-16 in its Second Petition. Similarly,
`
`Roku’s Third Petition challenges the priority date of the ’325 patent and is
`
`narrowly directed to claims 9 and 11-16. The primary reference in the Third
`
`Petition was already known by Patent Owner and the Board, as it is currently
`
`
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`- 10 -
`
`
`
`asserted against the Patent Owner and before the Board in the parallel IPR2019-
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,911,325
`
`
`01615 proceeding which involves the same parties. IPR2019-01615 is before the
`
`same panel of Administrative Patent Judges as IPR2019-01614 and was instituted
`
`the day after institution of IPR2019-01614.
`
`Under the current schedule in Roku’s First Petition, Patent Owner has not
`
`yet deposed Dr. Russ. Those deposition dates are expected to occur, remotely,
`
`between June 17th and June 19th. In the event that Patent Owner requires
`
`additional time to adequately respond to the grounds raised in Roku’s Second
`
`Petition, Petitioner agrees to not object to Patent Owner’s request for an extension
`
`of time. Even if joinder impacts the trial schedule for Roku’s First Petition, the
`
`Board is able to extend the 1-year decision deadline by six months in the case of
`
`joinder under § 315(c). See 35 U.S.C. § 316(a)(11).
`
`Finally, any alleged prejudice or burden to Patent Owner is outweighed by
`
`the public interest in obtaining a speedy and efficient resolution of the patentability
`
`issues of these ’325 patent claims with minimal burden on this Board.
`
`D.
`
`Petitioner will facilitate procedures to simplify briefing and
`discovery.
`Briefing and discovery in the joined proceeding can be simplified to
`
`minimize or remove any impact to the schedule or the volume of materials
`
`submitted to the Board. Petitioner Roku agrees that it will not seek additional time
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`
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`- 11 -
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`
`
`at any deposition of Patent Owner’s declarant, and Petitioner agrees that it will not
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,911,325
`
`
`seek additional time at oral argument. These concessions by Petitioner remove any
`
`alleged complication or delay caused by joinder.
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner Roku asks that its Second Petition for
`
`inter partes review of the ’325 patent be considered, and that the Board grant this
`
`Motion and join Roku’s Second and Third Petitions with Roku’s First Petition,
`
`pending IPR2019-01614 on the ’325 patent. Joinder will ensure a just, speedy, and
`
`inexpensive resolution in both proceedings, and will promote efficiency by
`
`avoiding duplicative filings and reviews of the same issues.
`
`
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`- 12 -
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`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,911,325
`
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`
`/Lestin Kenton/
`
`Lestin L. Kenton, Reg. No. 72,314
`Attorney for Petitioner Roku, Inc.
`
`
`
`
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`
`
`
`
`
`
`
`
`Date: May 18, 2020
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
`
`
`
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`15038987_1.docx
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`- 13 -
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`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,911,325
`
`
`CERTIFICATION OF SERVICE
`The undersigned hereby certifies that on May 18, 2020, a true and correct
`
`
`
`copy of the foregoing MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c)
`
`AND 37 C.F.R. §§ 42.22 AND 42.122(b) was served in its entirety on the
`
`following parties via FedEx Express® or Express Mail:
`
`
`
`GREENBERG TRAURIG, LLP
`77 W. WACKER DRIVE
`SUITE 3100
`CHICAGO IL 60601-1732
` PAIR Correspondence Address for U.S.P.N. 9,911,325
`
`
`
`
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`
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`Date: May 18, 2020
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Lestin Kenton/
`
`Lestin L. Kenton, Reg. No. 72,314
`Attorney for Petitioner Roku, Inc.
`
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`
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