throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 8
`Date: July 1, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`____________
`
`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`IPR2019-01615 (Patent 9,716,853 B2)
`IPR2020-00951 (Patent 9,911,325 B2)
`IPR2020-00952 (Patent 9,716,853 B2)
`IPR2020-00953 (Patent 9,911,325 B2)1
`____________
`
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`SHARON FENICK, Administrative Patent Judges.
`
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This Order will be entered in each case. The parties are not authorized to
`use this caption style.
`
`

`

`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`IPR2019-01615 (Patent 9,716,853 B2)
`IPR2020-00951 (Patent 9,911,325 B2)
`IPR2020-00952 (Patent 9,716,853 B2)
`IPR2020-00953 (Patent 9,911,325 B2)
`
`
`On June 26, 2020, a conference call was held with the parties to
`discuss these cases. A court reporter retained by Petitioner was present on
`the call. Petitioner is asked to file the transcript of the call in each of the
`captioned proceedings when it is available.
`The subject proceedings involve joinder motions filed by Petitioner.
`Specifically, in IPR2020-00951 and IPR2020-00953, Petitioner filed a
`motion to join IPR2019-01614. In IPR2020-00952, Petitioner filed a motion
`to join IPR2019-01615. In IPR2020-01012,2 Petitioner filed a motion to join
`IPR2019-01612.
`Petitioner’s joinder motions seek to add additional grounds and claims
`to Petitioner’s challenges in the already instituted proceedings. Petitioner
`acknowledges that its petitions in the newly filed proceedings are time-
`barred under 35 U.S.C. § 315(b), and seeks to take advantage of the statutory
`exclusion to the time bar provided for joinder. The Federal Circuit has
`foreclosed Petitioner’s strategy under this situation, as Petitioner also
`acknowledges. See Facebook, Inc. v. Windy City Innovations, LLC, 953
`F.3d 1313 (Fed. Cir. 2020). Nevertheless, Petitioner contends that its
`strategy may be viable, depending on the Office’s position on this situation
`in light of the Supreme Court’s decision in Thryv, Inc. v. Click-to-Call
`Techs., 140 S. Ct. 1367 (2020), the Federal Circuit’s decision in Wi-Fi One,
`
`
`2 As we explained during the call, no panel has yet been assigned to
`IPR2020-01012. We accordingly lack authority to take action with respect
`to that proceeding, and nothing herein should be construed as any action
`taken for that proceeding.
`
`2
`
`

`

`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`IPR2019-01615 (Patent 9,716,853 B2)
`IPR2020-00951 (Patent 9,911,325 B2)
`IPR2020-00952 (Patent 9,716,853 B2)
`IPR2020-00953 (Patent 9,911,325 B2)
`
`LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018), and the Board’s
`decision in Proppant Express Investments, LLC v. Oren Techs., IPR2018-
`00914, Paper 38 (PTAB Mar. 13, 2019) (designated precedential Apr. 16,
`2019).
`At this time, Petitioner requests that we adjust the deadlines and
`schedules in the proceedings to allow the additional issues it requests
`through joinder to be better accommodated. Specifically, Petitioner asks
`that we accelerate Patent Owner’s deadlines for filing preliminary responses
`in the newly filed proceedings, and that we delay the due dates for Patent
`Owner’s responses in the already instituted proceedings. Patent Owner
`opposes, identifying the complexity introduced in formulating its positions
`as a result of the additional issues sought to be added by Petitioner through
`joinder.
`We decline to adjust the deadlines or schedules for any of these
`proceedings at this time. We think it ill-advised to deprive Patent Owner of
`its full opportunity to formulate its positions, particularly when both statute
`and regulation provide us with flexibility regarding the ultimate deadlines
`for these proceedings in the case of joinder. See 35 U.S.C. § 316(a)(11)
`(“the Director . . . may adjust the time periods in this paragraph in the case
`of joinder under section 315(c)); 37 C.F.R. § 42.100(c) (“The time can be
`. . . adjusted by the Board in the case of joinder.”). As we indicated during
`the call, the parties remain free to stipulate to scheduling changes in the
`
`3
`
`

`

`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`IPR2019-01615 (Patent 9,716,853 B2)
`IPR2020-00951 (Patent 9,911,325 B2)
`IPR2020-00952 (Patent 9,716,853 B2)
`IPR2020-00953 (Patent 9,911,325 B2)
`
`already instituted proceedings as provided by the scheduling orders in those
`proceedings.
`It is ORDERED that
`Petitioner’s request to adjust the deadlines and schedules in these
`proceedings is denied.
`
`
`
`
`4
`
`

`

`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`IPR2019-01615 (Patent 9,716,853 B2)
`IPR2020-00951 (Patent 9,911,325 B2)
`IPR2020-00952 (Patent 9,716,853 B2)
`IPR2020-00953 (Patent 9,911,325 B2)
`
`PETITIONER:
`
`Jon Wright
`jwright-ptab@sternekessler.com
`
`Lestin Kenton
`lkenton-ptab@sternekessler.com
`
`Daniel Block
`dblock-ptab@sternekessler.com
`
`Tim Tang
`ttang-ptab@sternekessler.com
`
`
`PATENT OWNER:
`
`Benjamin Pleune
`ben.pleune@alston.com
`
`Ryan Koppelman
`ryan.koppelman@alston.com
`
`Thomas Davison
`tom.davison@alston.com
`
`James Abe
`james.abe@alston.com
`
`Caleb Bean
`caleb.bean@alston.com
`
`Derek Neilson
`derek.neilson@alston.com
`
`
`5
`
`

`

`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`IPR2019-01615 (Patent 9,716,853 B2)
`IPR2020-00951 (Patent 9,911,325 B2)
`IPR2020-00952 (Patent 9,716,853 B2)
`IPR2020-00953 (Patent 9,911,325 B2)
`
`Nicholas Tsui
`nck.tsui@alston.com
`
`
`
`6
`
`

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