UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS INC.,
`Patent Owner.
`
`____________________________________
`
`Case IPR2020-01012
`Patent 7,589,642
`
`_____________________________________
`
`OPPOSITION TO PETITIONERS’ MOTION FOR JOINDER UNDER 35
`U.S.C. § 315(C) AND 37 C.F.R. §§ 42.22 AND 42.122(B)
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`
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`
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`
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`
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`____________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS INC.,
`Patent Owner.
`
`____________________________________
`
`Case IPR2020-01012
`Patent 7,589,642
`
`_____________________________________
`
`OPPOSITION TO PETITIONERS’ MOTION FOR JOINDER UNDER 35
`U.S.C. § 315(C) AND 37 C.F.R. §§ 42.22 AND 42.122(B)
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`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Case IPR2020-01012
`Patent 7,589,642
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`I.
`
`INTRODUCTION
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`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
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`more claims” of U.S. Patent No. 7,589,642 (“the ’642 Patent”). Exactly one year
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`later, Roku strategically petitioned for review of some but not all of the claims of the
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`’642 Patent. The Board has now instituted review in that proceeding, Roku’s expert
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`has already been deposed, UEI’s Response is due in less than one week, Roku’s
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`Reply is due in less than three months, and the Board’s Final Decision is due in less
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`than ten months.
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`Now, 20 months after being served with UEI’s complaint in the District Court
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`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
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`the ’642 Patent; and is an abuse of the IPR process.
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`Additionally, Roku’s motion is predicated on their misreading of the Supreme
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`Court’s decision in Thryv, Inc. v. Click-to-Call Tech, LP. Contrary to Roku’s
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`argument, Thryv did not abrogate the Federal Circuit’s precedential holding in
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`Facebook, Inc. v. Windy City Innovations, LLC that same-party and new-issue
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`1
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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.
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`II.
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`FACTS
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`On June 30, 2014, Universal Remote Control, Inc. requested inter partes
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`review of claims 2, 5 and 22-23 of U.S. Patent No. 7,589,642. On December 18,
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`2014, the PTAB denied institution for all of the challenged claims. Claims 2, 22 and
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`23 were again challenged in Roku’s originally filed IPR2019-01612, and claim 5 is
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`being challenged again in the new IPR2020-01012 filed by Petitioner Roku.
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`On September 18, 2018, UEI served Roku with a complaint filed in the
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`Central District of California alleging infringement of “one or more claims” of each
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`of U.S. Patent Nos. 7,589,642, 8,004,389, 9,911,325, 9,716,853, 7,782,309,
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`7,821,504, 7,821,505, 7,895,532, and 8,015,446.1 On December 24, 2018, UEI filed
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`its Disclosure of Asserted Claims and Infringement Contentions, identifying 106
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`asserted claims across the nine patents, including claims 1-6, 19, and 22-25 of the
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`1 Attached hereto as Appendix A is a table describing the claims identified by UEI
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`from each of U.S. Patent Nos. 7,589,642, 9,716,853, and 9,911,325, and the claims
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`subsequently challenged by Roku in its petitions for inter partes review.
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`2
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`’642 Patent. UEI noted that it had not yet received discovery from Roku, and that
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`the list of claims was based on the limited information that UEI had obtained to date.
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`UEI reserved the right to seek to amend its disclosure of asserted clams as discovery
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`progressed.
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`On March 14, 2019, the District Court ordered UEI to limit the total number
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`of asserted claims to 25 claims. See Universal Electronics Inc. v. Roku, Inc., No. 8-
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`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
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`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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`raised by the already-selected claims, UEI may ask the Court for leave to reassert
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`unselected claims.”). On April 5, 2019, UEI identified claims 3, 6, 23, and 25 as the
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`claims that it would be proceeding with for the ’642 Patent. On September 6, 2019
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`UEI served Roku with its First Amended and Supplemental Disclosure of Asserted
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`Claims and Infringement Contentions. This submission referenced the 25 claim
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`limitation imposed by the court, but maintained UEI’s allegations of infringement
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`for claims 1-6, 19 and 22-25 of the ’642 patent. UEI specifically stated that nothing
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`in the disclosures should be construed as a waiver of UEI’s rights to amend
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`(EX2100).
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`3
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`On September 18, 2019—the very last day that Roku could file an IPR
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`challenging the claims of the ’642 Patent—Roku petitioned for inter partes review
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`of claims 1-4, 6, 8-9, and 22-25 of the ’642 Patent. Roku did not, however, petition
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`for review of the full set of claims UEI asserted in its Disclosure of Asserted Claims
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`and Infringement Contentions in the District Court case. For instance, Roku omitted
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`claims 5 and 19 from its petition, despite those claims being explicitly disclosed in
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`UEI’s current infringement contentions. Roku also included claims 8 and 9 even
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`though neither was identified in Roku’s September 6, 2019 Infringement
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`Contentions.
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`Roku’s originally-filed IPR is now in its advanced stages. The Board
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`instituted review over two months ago, Roku’s expert has already been deposed,
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`UEI’s Response is due in less than one week, Roku’s Reply is due in less than three
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`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
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`Commission, asserting infringement of claims 1-7, 20, and 22-25 against Roku. On
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`May 29, 2020, more than eight months after the one year statutory bar set forth in
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`§315(b), Roku filed a new IPR petition seeking to challenge three of the claims of
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`the ’642 Patent that Roku has challenged in its originally-filed IPR, and two of the
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`claims that UEI asserted in its Disclosure of Asserted Claims and Infringement
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`Contentions in the District Court case. Roku’s new petition relies on the same art as
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`4
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`its original petition, and provides no explanation for why the new challenges could
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`Patent 7,589,642
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`not have been included earlier.
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`III. ARGUMENT
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`Joinder may be authorized when warranted, but the decision to grant joinder
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`is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b). As indicated in the
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`legislative history, the Board will determine whether to grant joinder on a case-by-
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`case basis, taking into account the particular facts of each case. See 157 Cong. Rec.
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`S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (when determining whether
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`and when to allow joinder, the Office may consider factors including the breadth or
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`unusualness of the claim scope, claim construction issues, and consent of the patent
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`owner). When exercising that discretion, the Board is mindful that patent trial
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`regulations, including the rules for joinder, must be construed to secure the just,
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`speedy, and inexpensive resolution of every proceeding. 37 C.F.R. § 42.1(b).
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`As the moving party, Petitioner has the burden of proof in establishing
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`entitlement to the requested relief. 37 C.F.R. 42.20(c). Factors that the Board may
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`consider in deciding a motion for joinder include why joinder is appropriate, whether
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`a new ground of unpatentability is raised in the second petition, how the cost and
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`schedule of the first proceeding will be impacted if joinder is granted, and whether
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`granting joinder will add to the complexity of briefing and/or discovery. See, e.g.,
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`5
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`Kyocera Corp. v. Softview LLC, Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24,
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`2013) (Paper 15).
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`A. Roku’s Motion Should be Denied Because it is an Abuse of the
`IPR Process
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`Roku’s motion should be denied because it is an abuse of the IPR process.
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`Roku has known of its alleged infringement of the ’642 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 identified in UEI’s infringement
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`contentions since at least December 14, 2018 (i.e., the date UEI served its Disclosure
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`of Asserted Claims and Infringement Contentions). It was Roku’s decision to file
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`its original IPR challenging the validity of the ’642 Patent on the very last day that
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`Roku could file such a challenge (i.e., September 18, 2019), and it was Roku’s
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`decision to challenge only a subset of the asserted claims, as well as certain claims
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`that had not been identified in infringement contentions.
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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
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`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
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`1, 2021 statutory deadline to complete the originally-filed IPR. See 35 U.S.C. §
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`6
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`316(a)(11). Accordingly, Roku’s motion—which seeks to flip the IPR process on
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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.
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`B.
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`Joinder is Impermissible Under Controlling Federal Circuit Case
`Law
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`1. Roku’s Motion is Impermissible Under Windy City
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`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
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`proceedings together.” See id. at 1323. The Federal Circuit also noted that “[i]t
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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
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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
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`a party is governed by its own petition and is confined to the claims and grounds
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`7
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`challenged in that petition.”); see also SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356,
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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
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`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
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`reasons. First, Roku seeks to join its otherwise time-barred petition in IPR2020-
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`01012 with the already-instituted proceeding in IPR2019-01612, where Roku is
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`already a party. Second, Roku seeks to add new issues to already-instituted
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`IPR2019-01612, 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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`01012, Paper 2 (May 29, 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
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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
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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 2 at 5-8.
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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 1337.2 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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`2 Indeed, Roku’s instant motion for joinder is necessarily a motion regarding already
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`instituted IPR2019-01612, e,g., whether Roku may be joined as a party to IPR2019-
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`01612 and whether new issues may be added to IPR2019-01612 that were omitted
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`from the petition that initiated that proceeding.
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`before the Windy City decision. See Thryv, 140 S. Ct. at 1373 (“We need not venture
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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
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`(2018) held that challenges regarding the manner in which agency review proceeds
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`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
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`the decision to institute an inter partes review and entails determinations that are
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`made contemporaneous with the decision to institute.3 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
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`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
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`3 For instance, §318(a) recites: “If an inter partes review is instituted and not
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`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
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`the petitioner and any new claim added under section 316(d).”
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`in accordance with law’ or ‘in excess of statutory jurisdiction, authority, or
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`limitations.’” Id.
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`Like the Supreme Court’s decision in SAS, Windy City did not involve a
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`challenge to the Board’s decision to institute an inter partes review. Instead, Windy
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`City examined whether the Board exceeded its authority under § 315(c) by
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`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
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`decision to institute an inter partes review, the Supreme Court’s Thryv decision is
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`inapplicable.4
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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
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`According to the Board’s decision in Proppant Express Investments, LLC v.
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`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
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`4 Even if the Board believes the Supreme Court abrogated the Federal Circuit’s
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`Windy City decision, the Board should still apply the holding of Windy City. The
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`Federal Circuit presented a reasoned and thorough analysis of the AIA’s statutory
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`text and legislative history in determining that § 315(c) does not permit same-party
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`or new-issue joinder.
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`11
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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
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`in extremely limited circumstances. Id. Circumstances leading to this narrow
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`exercise of discretion to permit such joinder may include, for example, certain
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`actions taken by a patent owner in a co-pending litigation such as certain late
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`additions of newly asserted claims. Id. Fairness and prejudice concerns are not
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`implicated by, for example, the mistakes or omissions of a petitioner. Id.
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`1.
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`Rokus’s Motion for Joinder Does not Implicate Fairness
`Concerns
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`Roku’s motion for joinder is the direct consequence of its own intentional
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`omissions from its earlier filed petition, and therefore does not implicate the fairness
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`and prejudice concerns described in Proppant Express.
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`Roku argues that UEI’s assertion of claims 1-7, 20, and 22-25 in its ITC
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`complaint filed on April 16, 2020, justifies the Board’s narrow discretion under 35
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`U.S.C. § 315(c) because Roku “was not required” to anticipate that these claims
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`would ever be asserted against it. See Paper 2 at 9. For instance, Roku argues that it
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`covered each claim that was then-asserted in the District Court action, plus certain
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`related claims that were “easily incorporated” into the asserted grounds. Id.
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`But Roku was on notice as to each claim of the ’642 Patent at least as of
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`September 18, 2018, the date of service of UEI’s District Court complaint. In
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`12
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`addition to setting forth an exemplary claim from each patent, the complaint alleged
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`infringement of “one or more claims” of the ’642 Patent. This is sufficient to put
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`Roku on notice for all twenty-five (25) claims of the ’642 Patent. See Arris Group
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`v. Cirrex Systems LLC, IPR2015-00530, Paper No. 12 (July 27, 2015) (pointing to
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`the “one or more claims” language in the complaint and using discretion to deny
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`follow-on petition because petitioner could have challenged claims in earlier
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`petition).
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`But Roku cannot dispute that it was on notice of at least newly added claims
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`5 and 19 at least as of December 14, 2018 when UEI served its Disclosure of
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`Asserted Claims and Infringement Contentions identifying claims 1-6, 19, and 22-
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`25 of the ’325 patent. Claims 1-6, 19, and 22-25 of the ’325 patent were again
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`identified in UEI’s First Amended And Supplemental Disclosure of Asserted Claims
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`and Infringement Contentions served on September 6, 2019. Roku purposefully
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`omitted certain asserted claims of the ‘642 Patent from its originally-filed IPR,
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`including claims 5 and 19, but included certain claims that were not identified by
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`UEI in its contentions, claims 8 and 9. Thus, Roku is precluded from fixing the
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`omissions that it purposefully made in its originally-filed IPR.
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`2.
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`Granting Roku’s Request for Joinder Would Disrupt the
`Existing Proceedings
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`Roku’s request for joinder should be denied because granting the motion
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`would disrupt the ongoing IPR proceedings. Joinder is impermissible when it will
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`disrupt the existing trial schedule. See Microsoft Corp. v. Biscotti Inc., IPR2015-
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`01054, Paper No. 10 (Oct. 22, 2015) (finding that joinder was not warranted because
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`the addition of two challenged claims would complicate the issues); Blue Coat
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`Systems, Inc. v. Finjan, Inc., IPR2016-01441, Paper No. 14 (Jan 23, 2017)
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`(considering the harassing impact of piecemeal challenges and finding that the
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`Board’s resources are more fairly expended on initial petitions rather than follow-on
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`petitions).
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`Here, granting Roku’s motion for joinder would significantly disrupt the
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`existing trial schedule and would result in a substantial duplication of efforts to
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`address the new claims and issues raised for the first time in Roku’s belated petition.
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`For instance, UEI has already deposed Roku’s expert in IPR2019-01612, expects to
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`file its Patent Owner’s Response before the Board makes a decision on Roku’s
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`motion for joinder, and expects that Roku will take the deposition of UEI’s expert
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`before the Board makes a decision on Roku’s motion for joinder. If Roku’s motion
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`for joinder is granted, the depositions of the parties’ experts would have to be
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`repeated, UEI would have to draft another Patent Owner’s Response, and all of the
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`relevant dates set for later this year would undoubtedly need to be pushed back.
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`Accordingly, joining IPR2019-01612 with IPR2020-01012 would significantly
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`prejudice UEI and 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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`Dated: June 29, 2020
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`Respectfully submitted,
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`
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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
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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 that
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`the foregoing OPPOSITION TO PETITIONERS’ MOTION FOR JOINDER
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`was served 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.
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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
`
`Dated: June 29, 2020
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`16
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`Case IPR2020-01012
`Patent 7,589,642
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`Appendix A - Timeline of Asserted Claims
`U.S. Patent Nos. 7,589,642, 9,716,853, and 9,911,325
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`
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`The following table describes the claims identified by UEI from each of U.S. Patent Nos. 7,589,642, 9,716,853, and 9,911,325, and
`the claims subsequently challenged by Roku in its petitions for inter partes review.
`
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`U.S.
`Patent No.
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`7,589,642
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`9,716,853
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`9,911,325
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`9/18/2018
`Service of
`District
`Court
`Complaint
`“One or more
`claims”
`“One or more
`claims”
`“One or more
`claims”
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`12/24/2018
`Infringement
`Contentions
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`4/5/2019
`Identification
`of Twenty-
`Five Claims
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`9/6/2018
`Amended
`Infringement
`Contentions
`
`9/18/2019
`Petitions for
`Inter Partes
`Review
`
`4/16/2020
`ITC
`Complaint
`
`Late Filed
`Petitions for
`Inter Partes
`Review
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`1-6, 19, 22-25 3, 6, 23, 25
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`1-6, 19, 22-25
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`1-3, 5-8
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`1-2, 4, 7
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`5
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`2
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`1-3, 5-8
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`1-2, 4, 7
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`1-4, 6, 8, 9,
`22, 23, 24, 25
`1, 3, 5, 7
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`1-6, 7, 12, 14,
`19, 20, 22-25
`1-3, 5-8
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`1, 2, 5, 6, 7, 19,
`20
`1, 2, 6, 8
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`1-2, 3, 4, 5, 7 1-2, 4, 6, 7, 8,
`9, 11-16
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`1, 6, 8, 9, 11-16
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