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
`
`_____________________________________
`
`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 IPR2020-00952
`Patent 9,716,853
`
`_____________________________________
`
`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 IPR2020-00952
`Patent 9,716,853
`
`I.
`
`INTRODUCTION
`
`Universal Electronics Inc. (“Patent Owner” or “UEI”) served Roku with a
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`District Court complaint on September 18, 2018, alleging infringement of “one or
`
`more claims” of U.S. Patent No. 9,716,853 (“the ’853 Patent”). Exactly one year
`
`later, Roku strategically petitioned for review of some but not all of the claims of the
`
`’853 Patent. The Board has now instituted review in that proceeding, Roku’s expert
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`is being deposed next week, UEI’s Response is due in less than a month, Roku’s
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`Reply is due in just over three months, and the Board’s Final Decision is due in less
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`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 a
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`brand new IPR petition that has been time-barred for over eight months, and to
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`ignore the statutory deadline to complete the originally-filed IPR. Simply put,
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`Roku’s newly-filed IPR petition is harassing, vexatious, duplicative, and untimely;
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`it will significantly increase the costs and resources spent litigating the validity of
`
`the ’853 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
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`1
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`Case IPR2020-00952
`Patent 9,716,853
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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
`
`asserted claims across the nine patents, including claims 1-3 and 5-8 of the ’853
`
`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
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`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
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`2
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`Patent 9,716,853
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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 claims 1, 3, 5, and 7 as the
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`claims that it would be proceeding with for the ’853 Patent.
`
`On September 18, 2019—the very last day that Roku could file an IPR
`
`challenging the claims of the ‘853 Patent—Roku petitioned for inter partes review
`
`of claims 1, 3, 5, and 7 of the ’853 Patent. Roku did not, however, petition for review
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`of the full set of claims UEI asserted in its Disclosure of Asserted Claims and
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`Infringement Contentions in the District Court case. For instance, Roku omitted
`
`claims 2, 6, and 8 from its petition.
`
`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 next week,
`
`UEI’s Response is due in less than a month, Roku’s Reply is due in just over three
`
`months, and the Board’s Final Decision is due in less than ten months.
`
`On April 16, 2020, UEI filed a complaint at the International Trade
`
`Commission, asserting infringement of claims 2, 6, and 8 against Roku. On May
`
`18, 2020, eight months after the one year statutory bar set forth in §315(b), Roku
`
`filed a new IPR petition seeking to challenge one of the claims of the ’853 Patent
`
`that Roku has challenged in its originally-filed IPR, and three of the claims that UEI
`
`asserted in its Disclosure of Asserted Claims and Infringement Contentions in the
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`District Court case. Roku’s new petition relies on the same art as its original petition,
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`3
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`
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`and provides no explanation for why the new challenges could not have been
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`Case IPR2020-00952
`Patent 9,716,853
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`included earlier.
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`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 ‘853 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), and has known of the specific claims asserted against it since at least
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`December 14, 2018 (i.e., the date UEI served its Disclosure of Asserted Claims and
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`Infringement Contentions). It was Roku’s decision to file its original IPR
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`challenging the validity of the ‘853 Patent on the very last day that Roku could file
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`such a challenge (i.e., September 18, 2019), and it was Roku’s decision to challenge
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`only a subset of the asserted claims.
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`Roku’s new IPR petition—which was filed 20 months after being served with
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`UEI’s complaint in the District Court case—is undeniably time-barred under 35
`
`U.S.C. § 315(b), and has been so for eight months. Additionally, in view of the
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`advanced stage of the original IPR proceedings (see Section II, supra), granting
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`Roku’s motion for joinder would almost certainly force the Board to miss the April
`
`17, 2020 statutory deadline to complete the originally-filed IPR. See 35 U.S.C. §
`
`316(a)(11). Accordingly, Roku’s motion—which seeks to flip the IPR process on
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`4
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`Case IPR2020-00952
`Patent 9,716,853
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`its head by asking the Board to review a brand new IPR petition that has been time-
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`barred for over eight months, and to ignore the statutory deadline to complete the
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`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
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`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
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`found that the language “any person” in the text of § 315(c) makes clear that joinder
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`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
`
`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
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`joined party to bring new issues from its later-filed petition into the existing
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`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
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`challenged in that petition.”); see also SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356,
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`5
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`Patent 9,716,853
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`200 L. Ed. 2d 695 (2018) (“[T]he petitioner’s petition, not the Director's discretion,
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`is supposed to guide the life of the litigation.”). The Federal Circuit reasoned that
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`allowing a petitioner to bring new issues into the existing proceeding would
`
`improperly join proceedings, rather than parties—which § 315(c) does not authorize.
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`Here, Roku’s motion for joinder is improper under Windy City for two
`
`reasons. First, Roku seeks to join its otherwise time-barred petition in IPR2020-
`
`00952 with the already-instituted proceeding in IPR2019-01615, where Roku is
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`already a party. Second, Roku seeks to add new issues to already-instituted
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`IPR2019-01615, including newly challenged claims that Roku intentionally omitted
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`from its originally-filed petition. See generally Roku Motion for Joinder, IPR2020-
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`00952, Paper 3 (May 18, 2020). Accordingly, Roku’s motion for joinder must be
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`denied under the Federal Circuit’s controlling Windy City decision.
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`2.
`
`The Thryv Decision Did Not Abrogate Windy City
`
`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
`
`U.S.C. § 314(d). The Supreme Court held that § 314(d) precludes judicial review of
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`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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`6
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`Case IPR2020-00952
`Patent 9,716,853
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`Roku’s argument is incorrect, however, because the Supreme Court’s ruling
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`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
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`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
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`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
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`decisions under § 315(c), and the Federal Circuit’s Windy City decision had nothing
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`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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`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
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`before the Windy City decision. See Thryv, 140 S. Ct. at 1373 (“We need not venture
`
`
`1 Indeed, Roku’s instant motion for joinder is necessarily a motion regarding already
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`instituted IPR2019-01615, e,g., whether Roku may be joined as a party to IPR2019-
`
`01615 and whether new issues may be added to IPR2019-01615 that were omitted
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`from the petition that initiated that proceeding.
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`7
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`Case IPR2020-00952
`Patent 9,716,853
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`beyond Cuozzo’s holding that §314(d) bars review at least of matters ‘closely tied to
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`the…institution decision.”). As a result, Windy City is still controlling law.
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`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
`
`made contemporaneous with the decision to institute.2 In finding that determinations
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`made under § 318(a) are reviewable, the Supreme Court held that “nothing in
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`§314(d) or Cuozzo withdraws our power to ensure that an inter partes review
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`proceeds in accordance with the law’s demands.” See SAS, 138 S. Ct. at 1359.
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`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
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`Administrative Procedure Act, which directs courts to set aside agency action ‘not
`
`
`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
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`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 IPR2020-00952
`Patent 9,716,853
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`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
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`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
`
`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
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`Board may join a time-barred petition to an already-instituted proceeding only where
`
`
`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
`
`text and legislative history in determining that § 315(c) does not permit same-party
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`or new-issue joinder.
`
`9
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`Case IPR2020-00952
`Patent 9,716,853
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`fairness requires it and to avoid undue prejudice to a party. Proppant Express, Paper
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`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.
`
`Roku argues that UEI’s assertion of claims 2, 6, and 8 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. Roku argues that it simply covered each
`
`claim that was then-asserted in the District Court action. Id.
`
`But Roku does not dispute that it was on notice of the claims asserted against
`
`it at least as of December 14, 2018 when UEI served its Disclosure of Asserted
`
`Claims and Infringement Contentions identifying claims 1-3 and 5-8 of the ’853
`
`10
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`Case IPR2020-00952
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`Patent.4 While Roku argues that the subsequent ITC action was “unforeseeable”—
`
`a point which UEI strongly disputes because Roku should have appreciated that an
`
`ITC case was a possibility—Roku cannot argue that the claims asserted against it
`
`were unforeseeable. UEI has consistently taken the position that Roku is infringing
`
`at least claims 1-3 and 5-8 of the ’853 Patent, and UEI’s ITC action is consistent
`
`with that position.
`
`Further, Roku admits that it purposefully omitted certain asserted claims of
`
`the ‘853 Patent from its originally-filed IPR so that its petition would be within the
`
`word count limits. Paper 3 at 9. But, as Roku knows, Roku could have filed multiple
`
`petitions at the same time if the word count was an issue. Thus, Roku is precluded
`
`from fixing the omissions that it purposefully made in its originally-filed IPR.
`
`
`
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`4 Roku was also on notice of the claims asserted against it as early as September 5,
`
`2018 (i.e., the date on which UEI filed its District Court complaint) because UEI’s
`
`complaint set forth an exemplary claim from each patent and alleged infringement
`
`of “one or more claims” of the ’853 Patent. See Arris Group v. Cirrex Systems LLC,
`
`IPR2015-00530, Paper No. 12 (July 27, 2015) (pointing to the “one or more claims”
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`language in the complaint and using discretion to deny follow-on petition because
`
`petitioner could have challenged claims in earlier petition).
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`11
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`Case IPR2020-00952
`Patent 9,716,853
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`2. Granting Rokus’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. Joinder is impermissible when it will
`
`disrupt the existing trial schedule. See Microsoft Corp. v. Biscotti Inc., IPR2015-
`
`01054, Paper No. 10 (Oct. 22, 2015) (finding that joinder was not warranted because
`
`the addition of two challenged claims would complicate the issues); Blue Coat
`
`Systems, Inc. v. Finjan, Inc., 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).
`
`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 petition.
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`For instance, UEI expects to depose Roku’s expert in IPR2019-01615 next week,
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`expects to file its Patent Owner’s Response before the 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 the trial
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`12
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`date set for later this year would undoubtedly need to be pushed back. Accordingly,
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`joining IPR2019-01615 with IPR2020-00952 would significantly prejudice UEI and
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`Case IPR2020-00952
`Patent 9,716,853
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`would not promote fairness and efficiency.
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`IV. CONCLUSION
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`Accordingly, Patent Owner respectfully requests that the Board deny
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`Petitioner’s motion for joinder.
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`
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`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 IPR2020-00952
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`Certificate of Service
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`Pursuant to 37 C.F.R. §§ 42.8 and 42.6(e), the undersigned hereby certifies
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`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, aallawi-
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`PTAB@sternekessler.com, and PTAB@sternekessler.com.
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`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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