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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
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`ROKU, INC.,
`Petitioner
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`v.
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`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner
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`Case IPR2020-00951
`U.S. Patent 9,911,325
`_____________________
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`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`Case IPR2020-00951
`U.S. Patent 9,911,325
`The Board maintains discretion to grant same-party joinder based on the
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`abrogation of Windy City by the Supreme Court’s decision in Thryv v. Click-to-
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`Call Techs., 140 S. Ct. 1367 (2020), and the Board’s precedential opinion in
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`Proppant Express Invs. v. Oren Techs., IPR2018-00914, Paper 38 (P.T.A.B. Mar.
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`13, 2019). The Board should use its discretion to grant Roku’s Motion for Joinder
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`because granting joinder will promote fairness and the efficient resolution of the
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`validity of the ’325 patent.
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`I.
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`UEI’s Arguments Regarding Thryv Are Meritless.
`UEI argues that Thryv does not abrogate Windy City because it is only
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`applicable to decisions under § 315(b) and not § 315(c). UEI is wrong. Thrvy is
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`applicable to all decisions that are closely related to the institution decision—
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`including § 315(c). Thryv therefore abrogates Windy City as decisions under
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`§ 315(c), like § 315(b), are closely related to institution.
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`UEI also alleges that Thryv does not abrogate Windy City because Windy
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`City is related only to managing an already instituted decision and not to an
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`institution decision. UEI focuses on the wrong petition. A decision under § 315(c)
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`is closely related to the Board’s decision to institute the newly filed petition. See
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`USPTO Supplemental Brief, Facebook, Inc. v. Windy City Innovations, LLC,
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`CAFC-18-1400, Doc. ID. No. 106, 10.
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`Case IPR2020-00951
`U.S. Patent 9,911,325
`Not only are UEI’s arguments misinformed and inaccurate, UEI blatantly
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`ignores the positions advocated by the USPTO in its supplemental brief in
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`Facebook v. Windy City. UEI had full knowledge of the USPTO’s positions but
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`failed to consider or address any of the arguments or positions raised by the
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`USPTO.
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`II. Granting joinder promotes fairness and prevents undue prejudice.
`UEI alleges that Roku’s Motion for Joinder does not implicate Proppant’s
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`fairness concerns because it is the “direct consequence of [Roku’s] own intentional
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`omissions.” Paper 7, Opp., 10. However, UEI mischaracterizes Roku’s alleged
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`“omissions.” UEI’s inaccurate representations of Roku’s omissions in the First
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`Petition are insufficient to negate the fairness concerns raised by UEI’s calculated
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`actions to insulate their claims from an IPR challenge.
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`III. Granting joinder will not disrupt the ongoing schedule nor create a
`substantial burden for UEI.
`UEI argues that Roku’s Motion for Joinder should be denied because
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`granting the motion would disrupt the ongoing IPR proceeding and result in a
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`substantial duplication of effort to address the new claims and issues. Opp., 12.
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`UEI is wrong on both counts.
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`Roku has made several concessions to minimize any impact on scheduling.
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`Paper 3, Mot., 10-12. Additionally, Roku has attempted to work with UEI to
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`minimize any potential disruptions in scheduling. In light of the USPTO’s position
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`Case IPR2020-00951
`U.S. Patent 9,911,325
`that it could entertain same-party joinder, Roku reached out to UEI and proposed
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`minor changes in the schedule of Roku’s First Petition. Roku’s proposed
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`adjustments included delaying the deposition of Dr. Samuel Russ, while the parties
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`worked through the scheduling proposal. UEI refused to postpone the deposition or
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`adjust the schedule. EX1034, 9:7-15:19. Rather than working to maximize
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`efficiency and prevent wasting the Board’s time and resources, UEI seeks to
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`exacerbate potential scheduling differences to increase the likelihood that Roku’s
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`Motion for Joinder will be denied. Having refused to work with Roku to minimize
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`the impact of a joined petition, UEI cannot now be heard to complain about the
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`potential distance between the schedules.
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`The Board, of course, has the authority to make adjustments to
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`accommodate joinder. See Enzymotec Ltd. v. Neptune Tech. & Bioresources, Inc.,
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`IPR2014-00556, Paper 19 (Jul. 9, 2014) (adjusting the due date of the POR to
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`accommodate joinder). To further minimize scheduling conflicts, the Board is also
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`able to accelerate its institution deadline. And in the unlikely event that joinder
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`does impact the schedule of Roku’s First Petition, the Board has the authority to
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`extend the 1-year decision deadline by six months in the case of joinder under
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`§ 315(c). See 35 U.S.C. § 316(a)(11).
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`Finally, UEI alleges that granting joinder would result in a substantial
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`duplication of efforts to address the new claims and issues. Opp., 12-13. UEI
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`Case IPR2020-00951
`U.S. Patent 9,911,325
`exaggerates the differences between the petitions. EX1034, 12:14-15:19. Roku’s
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`Second and Third Petitions (IPR2020-00951 and IPR2020-00953) are substantially
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`similar to its First Petition. In its Second Petition, Roku simply addresses
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`independent claim 9 and dependent claims 6, 8, and 11-16—claims similar to those
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`analyzed in the First Petition. For example, the Second Petition relies primarily on
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`the same art as the First Petition—Rye, Skerlos, Caris, and Dubil. For independent
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`claim 9, the Second Petition introduces Woolgar for a single limitation. The
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`analysis for the other nine out of ten limitations, however, is identical to Roku’s
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`First Petition. Further, while Roku’s Second Petition also applies the Gutman
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`reference, Gutman is only applied to a single concept as well (see claims 6 and 14).
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`As such, Roku’s Second Petition presents very little new analysis. Rather, UEI is
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`already intimately familiar with the analysis and primary prior art references cited
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`in Roku’s Second Petition.
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`Additionally, Roku uses the same expert witness, Dr. Samuel Russ, for all
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`three Petitions. Dr. Russ’s declarations in the Second and Third Petitions are
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`identical to his declaration in the First Petition, but for the addition of the analysis
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`of the newly asserted claims. Roku also submitted the same exhibits in the Second
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`and Third Petitions as it did in the First Petition. And Roku’s Second and Third
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`Petitions propose the exact same claim construction as its First Petition.
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`Case IPR2020-00951
`U.S. Patent 9,911,325
`Contrary to UEI’s assertions, the few differences between the Petitions are
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`minor and do not substantially impact UEI’s efforts to respond. As such, any
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`burden on UEI to respond to the Second Petition is, at most, minimal.
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`IV. Patent Owner’s accusations regarding abuse of process and vexatious
`and harassing intent are unwarranted.
`UEI alleges that Roku’s Petition is “harassing, vexatious, duplicative, and
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`untimely.” Opp., 1. UEI’s allegations are serious, and if true, sanctionable. See 37
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`C.F.R. 11.18(b)(2). They are also wholly unwarranted and unfounded. Roku has
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`not violated any Board rule and Roku’s counsel’s actions fall well within the
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`bounds of zealous advocacy required on Roku’s behalf. Alleging sanctionable
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`conduct as a tactical instrument rather than a genuine response to actual
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`misconduct is itself sanctionable. See Schendel v. Curtis, 83 F.3d 1399, 1406 (Fed.
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`Cir. 1996). The Board should not countenance such tactics.
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`V. Conclusion
`UEI has failed to provide a single viable argument for why joinder should be
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`denied. As such, Roku respectively asks the Board to institute its Second Petition
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`and grant its Motion for Joinder.
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`Case IPR2020-00951
`U.S. Patent 9,911,325
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`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/Lestin Kenton/
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`Lestin L. Kenton, Reg. No. 72,314
`Attorney for Petitioner Roku, Inc.
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`Date: July 20, 2020
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`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
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`Case IPR2020-00951
`U.S. Patent 9,911,325
`CERTIFICATION OF SERVICE (37 C.F.R. § 42.6(e))
`The undersigned hereby certifies that on July 20, 2020, a true and correct
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`
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`copy of the foregoing PETITIONER’S REPLY TO PATENT OWNER’S
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`OPPOSITION TO PETITIONER’S MOTION FOR JOINDER was served
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`electronically via e-mail in its entirety on the following counsel for Patent Owner:
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`S. Benjamin Pleune (Lead Counsel) ben.pleune@alston.com
`Ryan W. Koppelman (Back-up Counsel) ryan.koppelman@alston.com
`Thomas W. Davison (Back-up Counsel) tom.davison@alston.com
`James H. Abe (Back-up Counsel) james.abe@alston.com
`Caleb J. Bean (Back-up Counsel) caleb.bean@alston.com
`Derek S. Neilson (Back-up Counsel) derek.neilson@alston.com
`Nicholas T. Tsui (Back-up Counsel) nick.tsui@alston.com
`Gary Jarosik (Back-up Counsel) jarosikg@gtlaw.com
`James J. Lukas, Jr. (Back-up Counsel) lukasj@gtlaw.com
`Benjamin P. Gilford (Back-up Counsel) gilfordb@gtlaw.com
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`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/Lestin Kenton/
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`Lestin L. Kenton, Reg. No. 72,314
`Attorney for Petitioner Roku, Inc.
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`Date: July 20, 2020
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`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
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`15306000.1
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