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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`ROKU, INC.,
`Petitioner
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner
`
`
`_____________________
`
`Case IPR2020-00952
`Patent 9,716,853
`_____________________
`
`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. 9,716,853
`
`
`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. .............................. 7
`Joinder will have, at most, a minimal impact on the trial
`schedule and costs for the existing IPR. .............................................. 9
`Petitioner will facilitate procedures to simplify briefing and
`discovery. ..........................................................................................11
`IV. CONCLUSION .......................................................................................... 11
`
`
`B.
`
`C.
`
`D.
`
`
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`- i -
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`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,716,853
`
`
`I.
`
`INTRODUCTION AND STATEMENT OF THE PRECISE RELIEF
`REQUESTED
`Petitioner, Roku, Inc., respectfully requests joinder pursuant to 35 U.S.C.
`
`§ 315(c) and 37 C.F.R. § 42.122(b) of the concurrently filed Petition for inter
`
`partes review of U.S. Patent No. 9,716,853, IPR2020-00952 (“Roku’s Second
`
`Petition”) with its pending inter partes review, IPR2019-01615, also on the ’853
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`patent (“Roku’s First Petition”).
`
`Joinder is appropriate because it will promote efficient resolution of the
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`validity of the ’853 patent. Roku’s Second Petition raises new issues only in
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`response to Patent Owner’s addition of 3 newly asserted dependent claims in an
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`ITC investigation filed 19 months after the district court action that prompted
`
`Roku’s First Petition on the ’853 patent. The Board maintains the discretion to
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`grant a same-party/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
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`identifies procedures to simplify briefing and discovery. Therefore, joinder would
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`not unduly delay the pending IPR2019-01615 proceeding beyond what is
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`
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`- 1 -
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`
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`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,716,853
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`authorized by 35 U.S.C. §§ 316(a)(11), where the Director may, for good cause,
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`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
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`complaint alleging infringement of, among others, the ’853 patent. On December
`
`24, 2018, Patent Owner served infringement contentions in the district court
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`litigation asserting, in relevant part, claims 1-3 and 5-8 of the ’853 patent. On
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`March 14, 2019, the district court granted Petitioner’s request that Patent Owner
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`select a subset of its asserted claims across the six patents-in-suit. In response, on
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`April 5, 2019, Patent Owner elected to only proceed on claim 5 of the ’853 patent.
`
`On September 18, 2019, Petitioner filed a petition for inter partes review
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`challenging claims 1, 3, 5 and 7 of the ’853 patent. On April 17, 2020, the Board
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`instituted trial in IPR2019-01615. 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
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`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 brought back dependent claims 2, 6, and 8 of the ’853 patent, which had
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`been dropped from the district court case by the time that Roku’s First IPR Petition
`
`was filed. Roku’s First Petition thus does not challenge these three dependent
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`
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`- 2 -
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`
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`claims. Because Patent Owner’s ITC investigation comes over 18 months after its
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`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,716,853
`
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`civil action, Petitioner is now past the one-year statutory bar set forth in 35 U.S.C.
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`§ 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
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`permitted to prepare a second IPR petition on the ’853 patent on the newly asserted
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`but unchallenged claims and seek joinder. That path had been foreclosed by the
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`Federal Circuit’s decision in Facebook, Inc. v. Windy City Innovations, LLC, 953
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`F.3d 1313, 1322 (Fed. Cir. 2020), which overturned the Board’s decision in
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`Proppant Express Investments v. Oren Techs., LLC, IPR2018-00914, Paper 38 at 4
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`(P.T.A.B. Mar. 13, 2019), which had previously allowed same party/new issue
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`joinder. However, on April 20, about a month before Petitioner’s deadline to file a
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`motion for joinder, the Supreme Court issued its decision in Thryv, which
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`effectively abrogated the Federal Circuit’s decision in Windy City. The Director
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`thus maintains its discretion under Proppant to allow same party/new issue joinder.
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`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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`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,716,853
`
`
`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
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`is before the Office, the Board may during the pendency of the inter partes review
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`enter any appropriate order regarding the additional matter including providing for
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`the stay, transfer, consolidation, or termination of any such matter.” 37 C.F.R. §
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`42.122(a). Under Rule 122, “[t]he Board will determine whether to grant joinder
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`on a case-by-case basis, taking into account the particular facts of each case,
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`substantive and procedural issues, and other considerations.” Dell Inc. v. Network-
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`1 Security Solutions, Inc., IPR2013-00385, Paper 17 at 3 (citing 157 CONG. REC.
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`S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl)). Further, “[t]he Board’s
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`rules for AIA proceedings ‘shall be construed to secure the just, speedy, and
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`inexpensive resolution of every proceeding.’” Trulia, Inc. v. Zillow Inc.,
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`CBM2014-00115, Paper 8 at 19 (citing 37 C.F.R. § 42.1(b); 77 Fed. Reg. at
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`48,758).
`
`Petitioner’s Motion for Joinder is thus the direct result of two rapidly
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`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 claims not challenged in Petitioner’s first IPR on the ’853 patent, in an
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`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,716,853
`
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`ITC investigation launched over 18 months after the district court action. Second, it
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`is the result of the Supreme Court’s April 20, 2020, decision in Thryv, which
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`abrogates the Federal Circuit’s decision in Windy City, and thus restores the
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`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
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`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
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`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
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`the Federal Circuit held in Windy City that the Board’s interpretation of § 315(c) is
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`incorrect and § 315(c) does not authorize same-party or new issue joinder, the
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`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
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`Court held that the Federal Circuit lacks appellate jurisdiction to review issues that
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`are “closely tied to the application and interpretation of statutes related to” the
`
`institution decision. Id. Since the Federal Circuit did not have jurisdiction to
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`- 5 -
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`
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`review the issue it decided in Windy City, the Patent Trial and Appeal Board is not
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,716,853
`
`
`bound to follow Windy City. The Board’s precedential decision in Proppant
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`Express therefore still controls whether same-party joinder is available to
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`petitioners outside the one-year bar.
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`In Thryv, the Supreme Court held that 35 U.S.C. § 314(d) “bars review at
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`least of matters ‘closely tied to the application and interpretation of statutes related
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`to’ the institution decision.” Thryv, 140 S. Ct. at 1373 (quoting Cuozzo Speed
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`Tech., LLC v. Lee, 136 S. Ct. 2131 at 2141–42 (2016)). While the Supreme Court
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`specifically addressed review of a challenge under 35 U.S.C. § 315(b), the Court’s
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`holding extends to review of challenges under § 315(c). Similar to § 315(b),
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`§ 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
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`language of § 315(b) to the language of § 315(c). According to the Court,
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`Section 314(d) is not limited to “the determination about whether there is a
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`reasonable likelihood that the petitioner would prevail. Rather, it encompasses the
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`entire determination whether to institute an inter partes review.” Id. at 1375
`
`(internal quotations and citations omitted).
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`Furthermore, the Supreme Court explained that “every decision to institute is
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`made ‘under’ § 314 but must take account of specifications in other provisions—
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`such as the § 312(a)(3) particularity requirement at issue in Cuozzo and the
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`- 6 -
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`
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`§ 315(b) timeliness requirement at issue here.” Id. at 1375. The Court noted that
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`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,716,853
`
`
`“[s]imilar clarifying language recurs throughout the AIA. See, e.g., § 315(c)
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`(referring to the Director’s determination regarding ‘the institution of an inter
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`partes review under section 314’ (emphasis added)).” Id. Consequently, just as the
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`Federal Circuit lacks authority to review the Director’s decision under § 315(b), it
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`also lacks the authority to review decisions under § 315(c).
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`Accordingly, the Federal Circuit lacked jurisdiction to review the issue of
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`same-party joinder under § 315(c) raised in Windy City. Since appellate review of
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`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.
`
`B.
`
`Joinder is justified under Proppant Express in light of Patent
`Owner’s late reassertion of the challenged claims.
`Patent Owner’s late reassertion of claims 2, 6, and 8 in its ITC complaint
`
`filed on April 16, 2020, justifies the Board exercising its discretion under 35
`
`
`1 A petition for rehearing is pending in Windy City. See Facebook, Inc. v.
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`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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`U.S.C. § 315(c) and granting this Motion for Joinder. Roku’s Second Petition does
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,716,853
`
`
`not advance a change in claim construction and relies on the same prior art and the
`
`same expert witness as Roku’s First Petition.
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`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.
`
`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. 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
`
`’853 patent. It reasonably covered each claim that was then-asserted in the district
`
`
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`- 8 -
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`
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`court action, plus clearly related claims easily incorporated into the asserted
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,716,853
`
`
`grounds, and that could be added within the word limitation. 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 ’853 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.
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`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
`
`Patent Owner’s extended delay in filing its ITC complaint, Petitioner is now past
`
`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 the same exact 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
`
`
`
`- 9 -
`
`
`
`declaration, but for the addition of his analysis of the three new dependent claims.
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,716,853
`
`
`Roku is also not taking any new claim construction positions in its Second Petition.
`
`Further, there are two fact witnesses in Roku’s First Petition—Steven Vennutti
`
`who testified as to the public availability of the HDMI specification (EX1043), and
`
`Christopher Butler (EX1048, EX1049), who works for the Internet Archive and
`
`submitted a form declaration supporting certain background art. Roku is submitting
`
`their exact same declarations 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 3, 5 and 7 in the First Petition with its analysis of dependent
`
`claims 2, 6 and 8 in its Second Petition.
`
`Under the current schedule in Roku’s First Petition, Patent Owner has not
`
`yet deposed Dr. Russ, or the two fact witnesses. Those deposition dates have not
`
`been formally set, but are expected to occur, remotely, the last week in June. In the
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`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
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`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).
`
`
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`- 10 -
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`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,716,853
`
`
`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 ’853 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
`
`at any deposition of Patent Owner’s declarants, and Petitioner agrees that it will
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`not seek additional time at oral argument. These concessions by Petitioner remove
`
`any alleged complication or delay caused by joinder.
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner Roku asks that its Second Petition for
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`inter partes review of the ’853 patent be considered, and that the Board grant this
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`Motion and join Roku’s Second Petition with Roku’s First Petition, pending
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`IPR2019-01615 on the ’853 patent. Joinder will ensure a just, speedy, and
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`inexpensive resolution in both proceedings, and will promote efficiency by
`
`avoiding duplicative filings and reviews of the same issues.
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`
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`- 11 -
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`
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`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,716,853
`
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jon E. Wright
`
`Jon E. Wright, Reg. No. 50,720
`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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`14968727.2
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`- 12 -
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`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 9,716,853
`
`
`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
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`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. 9,716,853
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jon E. Wright/
`
`Jon E. Wright, Reg. No. 50,720
`Attorney for Petitioner Roku, Inc.
`
`
`
`
`
`
`
`
`
`Date: May 18, 2020
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`
`
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