UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS INC.,
`Patent Owner.
`
`____________________________________
`
`Case IPR2020-00951 and IPR2020-00953
`Patent 9,911,325
`
`_____________________________________
`
`OPPOSITION TO PETITIONERS’ 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
`
`
`
`
`____________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS INC.,
`Patent Owner.
`
`____________________________________
`
`Case IPR2020-00951 and IPR2020-00953
`Patent 9,911,325
`
`_____________________________________
`
`OPPOSITION TO PETITIONERS’ 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
`
`
`
`
`
`Case IPR2020-00951 and IPR2020-00953
`Patent 9,911,325
`
`I.
`
`INTRODUCTION
`
`Universal Electronics Inc. (“Patent Owner” or “UEI”) served Roku with a
`
`District Court complaint on September 18, 2018, alleging infringement of “one or
`
`more claims” of U.S. Patent No. 9,911,325 (“the ’325 Patent”). Exactly one year
`
`later, Roku strategically petitioned for review of some but not all of the claims of the
`
`’325 Patent. The Board has now instituted review in that proceeding, Roku’s expert
`
`is being deposed this week, UEI’s Response is due in two weeks, Roku’s Reply is
`
`due in less than three months, and the Board’s Final Decision is due in less than ten
`
`months.
`
`Now, 20 months after being served with UEI’s complaint in the District Court
`
`case, Roku seeks to flip the IPR process on its head by asking the Board to review
`
`two brand new IPR petitions that have been time-barred for over eight months, and
`
`to ignore the statutory deadline to complete the originally-filed IPR. Simply put,
`
`Roku’s newly-filed IPR petitions are harassing, vexatious, duplicative, and
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`untimely; it will significantly increase the costs and resources spent litigating the
`
`validity of the ’325 Patent; and is an abuse of the IPR process.
`
`Additionally, Roku’s motion is predicated on a misreading of the Supreme
`
`Court’s decision in Thryv, Inc. v. Click-to-Call Tech, LP. Contrary to Roku’s
`
`argument, Thryv did not abrogate the Federal Circuit’s precedential holding in
`
`Facebook, Inc. v. Windy City Innovations, LLC that same-party and new-issue
`
`1
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`Case IPR2020-00951 and IPR2020-00953
`Patent 9,911,325
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`joinder are prohibited under §315(c). Rather, Thryv makes clear that the no-appeal
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`provision of §314(d) is limited to institution decisions, while Windy City pertains
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`solely to proceedings that have already been instituted.
`
`II.
`
`FACTS
`
`On September 18, 2018, UEI served Roku with a complaint filed in the
`
`Central District of California alleging infringement of “one or more claims” of each
`
`of U.S. Patent Nos. 7,589,642, 8,004,389, 9,911,325, 9,716,853, 7,782,309,
`
`7,821,504, 7,821,505, 7,895,532, and 8,015,446. On December 14, 2018, UEI filed
`
`its Disclosure of Asserted Claims and Infringement Contentions, identifying 106
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`asserted claims across the nine patents, including claims 1-2, 4, and 7 of the ’325
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`Patent. UEI noted that it had not yet received discovery from Roku, and that the list
`
`of claims was based on the limited information that UEI had obtained to date. UEI
`
`reserved the right to seek to amend its disclosure of asserted clams as discovery
`
`progressed.
`
`On March 14, 2019, the District Court ordered UEI to limit the total number
`
`of asserted claims to 25 claims. See Universal Electronics Inc. v. Roku, Inc., No. 8-
`
`18-cv-01580, Dkt. 64 (C.D. Cal. Mar. 14, 2019). The District Court noted that UEI
`
`would have the opportunity to reassert unselected claims upon a showing that they
`
`presented unique issues. See id. at 3, 9 (“Again, the Court notes that if UEI ultimately
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`discovers that non-selected claims raise separate and distinct legal issues from those
`
`2
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`Case IPR2020-00951 and IPR2020-00953
`Patent 9,911,325
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`raised by the already-selected claims, UEI may ask the Court for leave to reassert
`
`unselected claims.”). On April 5, 2019, UEI identified the same claims 1-2, 4 and 7
`
`as the claims that it would be proceeding with for the ’325 Patent.
`
`On September 18, 2019—the very last day that Roku could file an IPR
`
`challenging the claims of the ’325 Patent—Roku petitioned for inter partes review
`
`of claims 1-2, 4 and 7 of the ’325 Patent. Roku’s originally-filed IPR is now in its
`
`advanced stages. The Board instituted review over two months ago, Roku’s expert
`
`is being deposed this week, UEI’s Response is due in two weeks, Roku’s Reply is
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`due in less than three months, and the Board’s Final Decision is due in less than ten
`
`months.
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`On April 16, 2020, UEI filed a complaint at the International Trade
`
`Commission, asserting infringement of claims 1, 2, 4, 6-9, and 11-16 against Roku.
`
`On May 18, 2020, eight months after the one year statutory bar set forth in §315(b),
`
`Roku filed two new IPR petitions for the ’325 Patent. Roku’s new petitions rely on
`
`new prior art and new arguments that could have been made at the time that Roku
`
`filed its earlier petition but were not. For instance, in IPR2020-00951, Roku seeks
`
`to challenge claims 6, 8, 9, 11-16 for the first time and seeks to rely on two new prior
`
`art references: U.S. Patent Publication No. 2005/0168658 to Woolgar et al. and U.S.
`
`Patent No. 7,861,262 to Gutman. In IPR2020-00953, Roku seeks to rely on a new
`
`prior art reference, U.S. Patent Publication No. 2012/0249890 to Chardon et al.,
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`3
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`Case IPR2020-00951 and IPR2020-00953
`Patent 9,911,325
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`based on the new argument that the ’325 Patent is not entitled to its earliest claimed
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`priority date. These new references and arguments are an attempt to correct blatant
`
`omissions and deficiencies from Roku’s earlier filed petition. Roku provides no
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`explanation, however, for why the new prior art references and arguments could not
`
`have been made earlier.
`
`III. ARGUMENT
`
`A. Roku’s Motion Should Be Denied Because It Is An Abuse of the
`IPR Process
`
`Roku’s motion should be denied because it is an abuse of the IPR process.
`
`Roku has known of its alleged infringement of the ’325 Patent since at least
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`September 18, 2018 (i.e., the date Roku was served with the complaint in the District
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`Court case). It was Roku’s decision to file its original IPR challenging the validity
`
`of the ’325 Patent on the very last day that Roku could file such a challenge (i.e.,
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`September 18, 2019), and it was Roku’s decision to challenge only a subset of the
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`asserted claims.
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`Roku’s two new IPR petitions—which were filed 20 months after being
`
`served with UEI’s complaint in the District Court case—are undeniably time-barred
`
`under 35 U.S.C. § 315(b), and have been so for eight months. Additionally, in view
`
`of the advanced stage of the original IPR proceedings (see Section II, supra), it is
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`difficult, if not impossible, to imagine how Roku’s motion for joinder could be
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`4
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`Case IPR2020-00951 and IPR2020-00953
`Patent 9,911,325
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`granted without drastically expanding the current deadlines beyond any previously
`
`granted amendment to an existing IPR schedule. See 35 U.S.C. § 316(a)(11). Rather
`
`than seek to add discrete additional issues, Roku is requesting that the Board expand
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`the originally-filed IPR in a way that is wholly without precedent and that would
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`undeniably result in significant prejudice to UEI.
`
`Accordingly, Roku’s motion—which seeks to flip the IPR process on its head
`
`by asking the Board to review two brand new IPR petitions that have been time-
`
`barred for over eight months, and to ignore the statutory deadline to complete the
`
`originally-filed IPR—amounts to nothing more than an abuse of the IPR process and
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`should be denied out of hand.
`
`B.
`
`Joinder Is Impermissible Under Controlling Federal Circuit Case
`Law
`
`
`1. Roku’s Motion Is Impermissible Under Windy City
`
`In Facebook v. Windy City Innovations, LLC, the Federal Circuit held that the
`
`clear and unambiguous text of 35 U.S.C. § 315(c) does not authorize same-party or
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`new-issue joinder. 953 F.3d 1313 (Fed. Cir. March 18, 2020). The Federal Circuit
`
`found that the language “any person” in the text of § 315(c) makes clear that joinder
`
`is solely for the joining parties to existing proceedings, not for “put[ting] two
`
`proceedings together.” See id. at 1323. The Federal Circuit also noted that “[i]t
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`5
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`Patent 9,911,325
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`would be an extraordinary usage of the term ‘join as a party’ to refer to persons who
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`were already parties.” Id. at 1324.
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`Similarly, the Federal Circuit concluded that § 315(c) does not authorize the
`
`joined party to bring new issues from its later-filed petition into the existing
`
`proceeding. Id. at 1325 (“The already-instituted IPR to which a person may join as
`
`a party is governed by its own petition and is confined to the claims and grounds
`
`challenged in that petition.”); see also SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356,
`
`200 L. Ed. 2d 695 (2018) (“[T]he petitioner’s petition, not the Director's discretion,
`
`is supposed to guide the life of the litigation.”). The Federal Circuit reasoned that
`
`allowing a petitioner to bring new issues into the existing proceeding would
`
`improperly join proceedings, rather than parties—which § 315(c) does not authorize.
`
`Here, Roku’s motion for joinder is improper under Windy City for two
`
`reasons. First, Roku seeks to join its otherwise time-barred petitions in IPR2020-
`
`00951 and IPR2020-00953 with the already-instituted proceeding in IPR2019-
`
`01614, where Roku is already a party. Second, Roku seeks to add new issues to
`
`already-instituted IPR2019-01614, including newly challenged claims that Roku
`
`intentionally omitted from its originally-filed petition. Accordingly, Roku’s motion
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`for joinder must be denied under the Federal Circuit’s controlling Windy City
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`decision.
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`6
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`Case IPR2020-00951 and IPR2020-00953
`Patent 9,911,325
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`2. The Thryv Decision Did Not Abrogate Windy City
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`One month after the Federal Circuit issued its decision in Windy City, the
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`Supreme Court issued its decision in Thryv, Inc. v. Click-to-Call Technologies, LP,
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`140 S. Ct. 1367 (2020), regarding the scope of the “no-appeal” provision in 35
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`U.S.C. § 314(d). The Supreme Court held that § 314(d) precludes judicial review of
`
`the PTAB’s application of § 315(b). Roku argues that the Supreme Court’s Thryv
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`decision extends the no-appeal provision of § 314(d) to the Board’s joinder decisions
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`made under § 315(c). See Paper 3 at 5-8.
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`Roku’s argument is incorrect, however, because the Supreme Court’s ruling
`
`in Thryv did not abrogate the Federal Circuit’s decision in Windy City. At the outset,
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`the Thryv decision expressly abrogated a prior Federal Circuit decision (i.e., Wi-Fi
`
`One, LLC v. Broadcom Corp.), but did not mention the Windy City decision.
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`Further, the Supreme Court’s opinion in Thryv was limited to the reviewability of
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`institution decisions under § 315(b), e.g., whether the Board’s decision to institute
`
`an IPR could be reviewed for an improper application of the one-year time bar. But
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`Thryv did not address or purport to implicate the reviewability of the Board’s
`
`decisions under § 315(c), and the Federal Circuit’s Windy City decision had nothing
`
`to do with reviewing an institution decision. Rather, Windy City addressed whether
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`the Board could join already-existing parties and new issues to an already instituted
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`7
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`Case IPR2020-00951 and IPR2020-00953
`Patent 9,911,325
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`proceeding. See Windy City, 953 F.3d at 1337.1 Indeed, the Thryv decision by its
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`own terms adds nothing to the law that was announced in Cuzzo, which issued years
`
`before the Windy City decision. See Thryv, 140 S. Ct. at 1373 (“We need not venture
`
`beyond Cuozzo’s holding that §314(d) bars review at least of matters ‘closely tied to
`
`the…institution decision.”). As a result, Windy City is still controlling law.
`
`Moreover, the Supreme Court in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348
`
`(2018) held that challenges regarding the manner in which agency review proceeds
`
`once instituted are judicially reviewable. In SAS, the Supreme Court held that
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`challenges under § 318(a) are reviewable, even though § 318(a) explicitly references
`
`the decision to institute an inter partes review and entails determinations that are
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`made contemporaneous with the decision to institute.2 In finding that determinations
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`1 Indeed, Roku’s instant motion for joinder is necessarily a motion regarding already
`
`instituted IPR2019-01614, e,g., whether Roku may be joined as a party to IPR2019-
`
`01614 and whether new issues may be added to IPR2019-01614 that were omitted
`
`from the petition that initiated that proceeding.
`
`2 For instance, §318(a) recites: “If an inter partes review is instituted and not
`
`dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final
`
`written decision with respect to the patentability of any patent claim challenged by
`
`the petitioner and any new claim added under section 316(d).”
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`8
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`Case IPR2020-00951 and IPR2020-00953
`Patent 9,911,325
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`made under § 318(a) are reviewable, the Supreme Court held that “nothing in
`
`§314(d) or Cuozzo withdraws our power to ensure that an inter partes review
`
`proceeds in accordance with the law’s demands.” See SAS, 138 S. Ct. at 1359.
`
`Further, “[i]f a party believes the Patent Office has engaged in ‘shenanigans’ by
`
`exceeding its statutory bounds, judicial review remains available consistent with the
`
`Administrative Procedure Act, which directs courts to set aside agency action ‘not
`
`in accordance with law’ or ‘in excess of statutory jurisdiction, authority, or
`
`limitations.’” Id.
`
`Like the Supreme Court’s decision in SAS, Windy City did not involve a
`
`challenge to the Board’s decision to institute an inter partes review. Instead, Windy
`
`City examined whether the Board exceeded its authority under § 315(c) by
`
`permitting a party to add new issues to IPRs that had already been instituted. Windy
`
`City, 953 F.3d at 1337. Because the Windy City decision was unrelated to the
`
`decision to institute an inter partes review, the Supreme Court’s Thryv decision is
`
`inapplicable.3
`
`
`3 Even if the Board believes the Supreme Court abrogated the Federal Circuit’s
`
`Windy City decision, the Board should still apply the holding of Windy City. The
`
`Federal Circuit presented a reasoned and thorough analysis of the AIA’s statutory
`
`
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`9
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`Case IPR2020-00951 and IPR2020-00953
`Patent 9,911,325
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`C. Even If the Board Were To Follow Proppant Express, Roku’s Motion
`For Joinder Is Improper Under The Fairness And Prejudice
`Standard
`
`According to the Board’s decision in Proppant Express Investments, LLC v.
`
`Oren Technologies, IPR2018-00914, Paper 38 at 4 (PTAB March 13, 2019), the
`
`Board may join a time-barred petition to an already-instituted proceeding only where
`
`fairness requires it and to avoid undue prejudice to a party. Proppant Express, Paper
`
`No. 38 at 4. The Board expects to exercise its discretion to permit such joinder only
`
`in extremely limited circumstances. Id. Circumstances leading to this narrow
`
`exercise of discretion to permit such joinder may include, for example, certain
`
`actions taken by a patent owner in a co-pending litigation such as certain late
`
`additions of newly asserted claims. Id. Fairness and prejudice concerns are not
`
`implicated by, for example, the mistakes or omissions of a petitioner. Id.
`
`1.
`
`Rokus’s Motion For Joinder Does not Implicate Fairness
`Concerns
`
`Roku’s motion for joinder is the direct consequence of its own intentional
`
`omissions from its earlier filed petition, and therefore does not implicate the fairness
`
`and prejudice concerns described in Proppant Express.
`
`
`text and legislative history in determining that § 315(c) does not permit same-party
`
`or new-issue joinder.
`
`10
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`Case IPR2020-00951 and IPR2020-00953
`Patent 9,911,325
`
`Roku argues that UEI’s assertion of claims 6, 8, 9, and 11-16 in its ITC
`
`complaint filed on April 16, 2020, justifies the Board’s narrow discretion under 35
`
`U.S.C. § 315(c) because Roku “was not required” to anticipate that these claims
`
`would ever be asserted against it. See Paper 3 at 9. For instance, Roku argues that it
`
`covered each claim that was then-asserted in the District Court action, plus certain
`
`related claims that were “easily incorporated” into the asserted grounds. Id.
`
`But Roku was on notice as to each claim of the ’325 Patent at least as of
`
`September 5, 2018, the date of UEI’s District Court complaint. In addition to setting
`
`forth an exemplary claim from each patent, the complaint alleged infringement of
`
`“one or more claims” of the ’325 Patent. This is sufficient to put Roku on notice for
`
`all sixteen (16) claims of the ’325 Patent. See Arris Group v. Cirrex Systems LLC,
`
`IPR2015-00530, Paper No. 12 (July 27, 2015) (pointing to the “one or more claims”
`
`language in the complaint and using discretion to deny follow-on petition because
`
`petitioner could have challenged claims in earlier petition).
`
`2. Granting Roku’s Request For Joinder Would Disrupt the
`Existing Proceedings
`
`Roku’s request for joinder should be denied because granting the motion
`
`would disrupt the ongoing IPR proceedings in a manner that is wholly
`
`unprecedented. Joinder is impermissible when it will disrupt the existing trial
`
`schedule. See Microsoft Corp. v. Biscotti Inc., IPR2015-01054, Paper No. 10 (Oct.
`
`11
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`Case IPR2020-00951 and IPR2020-00953
`Patent 9,911,325
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`22, 2015) (finding that joinder was not warranted because the addition of two
`
`challenged claims would complicate the issues).
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`Here, granting Roku’s motion for joinder would significantly disrupt the
`
`existing trial schedule and would result in a substantial duplication of efforts to
`
`address the new claims and issues raised for the first time in Roku’s belated petitions.
`
`Roku is attempting to add two new petitions, challenge nine new claims, introduce
`
`three new prior art references, and address a multitude of new legal issues, all of
`
`which significantly differ from Roku’s original petitions. Roku even attempts, for
`
`the first time in its new petitions, to challenge the priority date of the ’325 patent.
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`Roku provides no justification for its piecemeal petitions, and their disruption to the
`
`existing trial schedule alone warrants denial. Blue Coat Systems, Inc. v. Finjan, Inc.,
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`IPR2016-01441, Paper No. 14 (Jan 23, 2017) (considering the harassing impact of
`
`piecemeal challenges and finding that the board’s resources are more fairly
`
`expended on initial petitions rather than follow-on petitions). Such an expansion of
`
`an existing IPR would be unprecedented, would essentially require that the current
`
`schedule be discarded, and would result in significant prejudice to UEI.
`
`Roku’s motion for joinder would also require significant duplication of efforts
`
`to address the number of new claims and issues raised for the first time in Roku’s
`
`second and third filed petitions. For instance, UEI expects to depose Roku’s expert
`
`in IPR2019-01614 this week, expects to file its Patent Owner’s Response before the
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`12
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`Case IPR2020-00951 and IPR2020-00953
`Patent 9,911,325
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`Board makes a decision on Roku’s motion for joinder, and expects that Roku will
`
`take the deposition of UEI’s expert before the Board makes a decision on Roku’s
`
`motion for joinder. If Roku’s motion for joinder is granted, the depositions of the
`
`parties’ experts would have to be repeated, UEI would have to draft another Patent
`
`Owner’s Response, and all of the relevant dates set for later this year would
`
`undoubtedly need to be pushed back. Accordingly, joining IPR2019-01614 with
`
`IPR2020-00951 and IPR2020-00953 would significantly prejudice UEI and would
`
`not promote fairness and efficiency. To the contrary, to allow Roku to add
`
`substantially more arguments at this stage than were presented in its originally-filed
`
`petition would be unfair, inefficient, and prejudicial to UEI.
`
`IV. CONCLUSION
`
`Accordingly, Patent Owner respectfully requests that the Board deny
`
`Petitioner’s motion for joinder.
`
`Dated: June 18, 2020
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`Respectfully submitted,
`
`By: /S. Benjamin Pleune/
`S. Benjamin Pleune (Reg. No. 52,421)
`ALSTON & BIRD LLP
`Bank of America Plaza
`Suite 4000
`101 South Tryon Street
`Charlotte, NC 28280-4000
`Telephone: (704) 444-1000
`Facsimile: (704) 444-1111
`ben.pleune@alston.com
`
`
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`13
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`Case IPR2020-00951 and IPR2020-00953
`Patent 9,911,325
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`Certificate of Service
`
`Pursuant to 37 C.F.R. §§ 42.8 and 42.6(e), the undersigned hereby certifies
`
`that the foregoing Opposition to Petitioner’s Motion for Joinder was served
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`electronically via e-mail to jwright-PTAB@sternekessler.com, lkenton-
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`PTAB@sternekessler.com, dblock-PTAB@sternekessler.com, ttang-
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`PTAB@sternekessler.com, and PTAB@sternekessler.com.
`
`Dated: June 18, 2020
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`Respectfully submitted,
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`By: /S. Benjamin Pleune/
`S. Benjamin Pleune (Reg. No. 52,421)
`ALSTON & BIRD LLP
`Bank of America Plaza
`Suite 4000
`101 South Tryon Street
`Charlotte, NC 28280-4000
`Telephone: (704) 444-1000
`Facsimile: (704) 444-1111
`ben.pleune@alston.com
`
`14
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