`571-272-7822
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` Paper 21
`Date: April 12, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`LG ELECTRONICS INC.,
`Petitioner,
`v.
`
`PARKERVISION, INC.,
`Patent Owner.
`____________
`
`IPR2022-00246
`Patent 7,292,835 B2
`____________
`
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
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`IPR2022-00246
`Patent 7,292,835 B2
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`I.
`
`INTRODUCTION
`
`Background
`
`LG Electronics Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting institution of inter partes review of claims 1, 12–15, and 17–20
`(“the Challenged Claims”) of U.S. Patent No. 7,292,835 B1 (Ex. 1001, “the
`’835 patent”). Concurrently with its Petition, Petitioner filed a Motion for
`Joinder seeking to join TCL Industries Holdings Co. v. ParkerVision, Inc.,
`IPR2021-00985 (the “TCL IPR”). Paper 3 (“Motion for Joinder” or
`“Motion”).1
`ParkerVision, Inc. (“Patent Owner”) filed a paper in which it waives
`its Preliminary Response and does not oppose Petitioner’s Motion for
`Joinder. Paper 9 (Patent Owner’s Waiver of Its Preliminary Response and
`Statement of Non-Opposition to Motion for Joinder).
`An inter partes review may be instituted only if “the information
`presented in the petition . . . and any [preliminary] response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a)
`(2018). For the reasons given below, we institute inter partes review of the
`Challenged Claims of the ’835 patent. We also grant Petitioner’s Motion for
`Joinder and join Petitioner to IPR2021-00985.
`
`Related Proceedings
`
`The parties identify the following as related matters: ParkerVision,
`Inc. v. TCL Industries Holdings Co., No. 6:20-cv-00945 (W.D. Tex.);
`
`
`1 Petitioner refers to the petitioner entities in IPR2021-00985, TCL
`Industries Holdings Company and Hisense Company Limited, as “the TCL
`Petitioners.” Motion 1.
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`2
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`IPR2022-00246
`Patent 7,292,835 B2
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`ParkerVision, Inc. v. Hisense Co., No. 6:20-cv-00870 (W.D. Tex.);
`ParkerVision, Inc. v. LG Electronics Inc., No. 6:21-cv-00520 (W.D. Tex.).
`Pet. 13; Paper 8 (Patent Owner’s Mandatory Notices), 1. Petitioner also
`identifies ParkerVision, Inc. v. TCL Technology Group Corp.,
`No. 5:20-cv-01030 (C.D. Cal.); ParkerVision, Inc. v. Buffalo Inc.,
`No. 6:20-cv-01009 (W.D. Tex.); and ParkerVision, Inc. v. ZyXEL
`Communications Corp., No. 6:20-cv-01010 (W.D. Tex. ),2 as related matters.
`Pet. 13. Additionally, Petitioner challenges several claims of U.S. Patent
`No. 7,110,444 B1, owned by Patent Owner, in IPR2022-00245. Id.
`
`Real Parties in Interest
`
`Petitioner identifies itself and LG Electronics U.S.A., Inc. as real
`parties in interest. Pet. 12. Patent Owner identifies itself as the sole real
`party in interest. Paper 8, 1.
`
`
`2 The district court granted a joint motion to dismiss with prejudice and this
`case is now closed. See Ex. 3001 (Docket Entry 25, Order dated Sept. 27,
`2001).
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`3
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`Patent 7,292,835 B2
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`The Asserted Grounds of Unpatentability and Declaration
`Evidence
`Petitioner challenges the patentability of claims 1, 12–15, and 17–20
`of the ’835 patent on the following grounds:
`Claim(s) Challenged 35 U.S.C. §3
`1, 12, 15, 17
`103(a)
`
`Reference(s)/Basis
`Hulkko,4 Gibson5
`Hulkko, Gibson, Goldberg,6
`Thacker,7 ITU-T J.83b,8
`AAPA9
`Gibson, Schiltz10
`Gibson, Schiltz, Goldberg,
`Thacker, ITU-T J.83b, AAPA
`
`1, 12, 15, 17
`
`1, 12–15, 17–20
`1, 12–15, 17–20
`
`103(a)
`
`103(a)
`103(a)
`
`Pet. 16.
`
`
`3 The Leahy-Smith America Invents Act (“AIA”) includes revisions to
`35 U.S.C. § 103 that became effective on March 16, 2013. Because the
`’835 patent has an effective filing date before March 16, 2013, we apply the
`pre-AIA version of the statutory basis for unpatentability.
`4 U.S. Patent No. 5,734,683, issued Mar. 31, 1998 (Ex. 1004, “Hulkko”).
`5 U.S. Patent No. 4,682,117, issued July 21, 1987 (Ex. 1005, “Gibson”).
`6 L. Goldberg, “MCNS/DOCSIS MAC Clears a Path for the Cable-Modem
`Invasion,” Electronic Design; Dec. 1, 1997; 45, 27; Materials Science &
`Engineering Collection pg. 69 (Ex. 1007, “Goldberg”).
`7 U.S. Patent No. 6,011,548, issued Jan. 4, 2000 (Ex. 1008, “Thacker”).
`8 ITU-T J.83 Recommendation (Apr. 1997) (Ex. 1009, “ITU-T J.83b”).
`Petitioner includes the letter “b” in its references to this exhibit although the
`title does not include the letter “b.” See, e.g., Pet. 16, 41. For consistency,
`we refer to the exhibit in the same manner as Petitioner by including the
`letter “b.”
`9 Applicant admitted prior art (“AAPA”) refers to the ’835 patent, at
`column 40, lines 17–35, which states, inter alia, that “[t]he cable modem
`receivers, transmitters, and transceivers of the present invention may be
`implemented using a variety of well[-]known devices” and lists several
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`In the Petition, Petitioner first sets forth its grounds as though there
`are two: (1) Hulkko and Gibson, and (2) Gibson and Schiltz. Id. Petitioner,
`however, explains that “[a]s to both grounds, if the Board finds that the
`preamble of claim 1 is limiting—and thus requires a ‘cable modem’—then
`Petitioner submits that the [C]hallenged [C]laims are obvious for the reasons
`above and further in view of publications (e.g., Goldberg and Thacker)
`describing the then-existing cable modem standards (ITU-T J.83b and
`DOCSIS) and/or AAPA.” Id. Accordingly, the chart above includes the
`alternative grounds set forth in the Petition.
`Additionally, Petitioner supports its challenge with a Declaration of
`Dean P. Neikirk, Ph.D.11 Ex. 1099.
`
`II.
`INSTITUTION OF INTER PARTES REVIEW
`The Petition is substantively identical to the petition in the TCL IPR.
`Compare Pet. with TCL IPR, Paper 1; see also Pet. 1 (stating that “[t]he
`instant Petition is substantively identical to the petition filed by the TCL
`
`
`examples. See Pet. 41–42. “Statements in a challenged patent’s
`specification may be used . . . in conjunction with one or more prior art
`patents or printed publications forming ‘the basis’ of the proceeding under
`§ 311.” USPTO Memorandum, Treatment of Statements of the Applicant in
`the Challenged Patent in Inter Partes Reviews Under § 311 (Aug. 18, 2020),
`available at https://www.uspto.gov/sites/default/files/documents/signed
`_aapa_ guidance_ memo.pdf. For example, a permissible use of admitted
`prior art in an inter partes review is to “supply missing claim limitations that
`were generally known in the art prior to the invention.” Id. at 9.
`10 U.S. Patent No. 5,339,459, issued Aug. 16, 1994 (Ex. 1006, “Schiltz”).
`11 Dr. Neikirk’s Declaration relies on two declarations first submitted in the
`TCL IPR and filed in this proceeding as well—a Declaration of Matthew B.
`Shoemake, Ph.D. (Ex. 1002) and a Declaration of Brenda Ray (Ex. 1010).
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`Petitioners, challenging the same claims of the ’835 patent on the same
`grounds and relying on substantively identical expert testimony”). For
`substantially the same reasons discussed in the Institution Decision in the
`TCL IPR, which we incorporate expressly herein, Petitioner demonstrates a
`reasonable likelihood of prevailing with respect to at least one of the
`Challenged Claims of the ’835 patent. TCL IPR, Paper 14 (Institution
`Decision).
`Accordingly, we institute inter partes review of claims 1, 12–15, and
`17–20 of the ’835 patent on the asserted grounds of unpatentability set forth
`in the Petition. At this stage of the proceeding, we have not made a final
`determination as to the unpatentability of any challenged claim or any
`underlying factual or legal issue.
`
`III. MOTION FOR JOINDER
`“Any request for joinder must be filed . . . no later than one month
`after the institution date of any inter partes review for which joinder is
`requested.” 37 C.F.R. § 42.122(b) (2021). The Board instituted an inter
`partes review in the TCL IPR on November 19, 2021. TCL IPR, Paper 14.
`On December 17, 2021, Petitioner filed its Motion for Joinder requesting to
`join the TCL IPR. Thus, Petitioner’s Motion for Joinder is timely.
`Acting under the designation of the Director, we have discretion to
`determine whether to join a party to an instituted inter partes review.
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(a). We may
`join as a party to [an instituted] inter partes review any person
`who properly files a petition under section 311 that . . . after
`receiving a preliminary response under section 313 or the
`expiration of the time for filing such a response . . . warrants the
`institution of an inter partes review under section 314.
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`Patent 7,292,835 B2
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`35 U.S.C. § 315(c). We have explained that a motion for joinder should:
`(1) set forth reasons why joinder is appropriate; (2) identify any new
`grounds of unpatentability asserted in the petition; (3) explain what impact,
`if any, joinder would have on the trial schedule for the existing review; and
`(4) address specifically how briefing and discovery may be simplified.
`Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB
`Apr. 24, 2013).
`In its Motion, Petitioner asserts that joinder is appropriate because
`(1) the Petition “submits identical arguments and the same grounds” as “the
`existing TCL IPR”; (2) the only differences between the petitions in each
`proceeding “relate to formalities of a different party filing the petition”;
`(3) “there are no other changes to the facts, citations, evidence, or invalidity
`arguments introduced in the TCL Petition”; (4) although Petitioner relies on
`a different expert witness (Dr. Neikirk), he “reviewed and agreed with the
`expert declaration supporting” the TCL petition and submitted a declaration
`that is “substantively identical” to Dr. Shoemake’s declaration submitted in
`the TCL IPR and “does not include any new or additional opinions”; and
`(5) Petitioner “will waive its expert declaration and agree to be bound by the
`declaration(s) and deposition(s) of the TCL Petitioners’ expert.” Motion 4–
`5.
`
`Additionally, Petitioner represents that “[j]oinder should have no
`impact on the TCL IPR trial schedule because the . . . Petition presents no
`new issues or grounds of unpatentability.” Motion 7. Petitioner contends
`that “[t]here are no new issues for the Board to address, and Patent Owner
`will not be required to present any additional responses or arguments.
`Moreover, [Petitioner] will adhere to all deadlines set by the Board’s
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`Scheduling Order for the TCL IPR.” Id. Petitioner represents that,
`“[a]ssuming the TCL Petitioners[] do not terminate their IPR before their
`expert is deposed, [Petitioner] agrees to rely entirely on, and be bound by,
`the expert declaration(s) and deposition(s) in the TCL IPR, and [Petitioner]
`will waive its own expert declaration.” Id. at 8. Thus, Petitioner contends
`that “joinder of [Petitioner] to the TCL IPR will not affect the Board’s
`ability to complete its review and final decision within the statutory time
`limits.” Id. at 8.
`Regarding briefing and discovery, Petitioner “agrees to a complete
`and silent ‘understudy’ role and will not raise any issues.” Motion 8.
`Petitioner sets forth the following conditions to apply to the joined
`proceeding as long as TCL and Hisense remain active parties:
`(a) All substantive filings will be consolidated, for which the
`TCL Petitioners will maintain responsibility (i.e.,
`[Petitioner] will rely on the filings of the TCL Petitioners[]),
`unless a filing solely concerns issues that do not involve the
`TCL Petitioners (e.g., Mandatory Notices);
`(b) [Petitioner] shall rely on the grounds instituted by the Board
`in the TCL IPR, and the arguments and discovery introduced
`by the TCL Petitioners; [Petitioner] shall not be permitted to
`raise any new grounds not already instituted by the Board in
`the TCL IPR, or introduce any argument or discovery not
`already introduced by the TCL Petitioners;
`(c) [Petitioner] shall be bound by any agreement between Patent
`Owner and the TCL Petitioners concerning discovery and/or
`depositions; and
`(d) [Petitioner] at deposition shall not request any direct, cross
`examination or redirect time beyond that permitted for the
`TCL Petitioners alone under either 37 C.F.R. § 42.53 or any
`agreement between Patent Owner and the TCL Petitioners.
`See Mylan Pharms. Inc. v. Novartis AG, IPR2015-00268,
`Paper 17 at 5-6 ([PTAB] Apr. 10, 2015) (finding the same
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`Patent 7,292,835 B2
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`proposed limitations “are consistent with the ‘understudy’
`role that Petitioner agrees to assume, as well as Petitioner’s
`assertion that its presence would not require introducing any
`additional arguments, briefing, or discovery.”).
`(e) [Petitioner] agrees to be bound by the expert deposition and
`declarations of the TCL Petitioners’ expert and [Petitioner]
`will waive its own expert declaration, unless the TCL
`Petitioners cease to be active participants in their IPR prior
`to their expert’s deposition.
`Id. at 8–9.
`As noted above, Patent Owner indicates that it “does not oppose
`Petitioner LG Electronics, Inc.’s Motion for Joinder.” Paper 9, 2.
`In view of Petitioner’s representations and non-opposition by Patent
`Owner, Petitioner has persuaded us that joinder is appropriate. We,
`therefore, grant Petitioner’s Motion for Joinder.
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner has demonstrated a reasonable
`likelihood that it would prevail in showing that at least one claim of the
`’835 patent is unpatentable. Additionally, we grant Petitioner’s Motion for
`Joinder and join Petitioner to IPR2021-00985. In view of the joinder, no
`further documents shall be filed by the parties in this proceeding.
`
`V. ORDER
`
`Accordingly, it is:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review is
`instituted as to claims 1, 12–15, and 17–20 of the ’835 patent on each
`ground set forth in the Petition—(1) Hulkko and Gibson; (2) Hulkko,
`Gibson, Goldberg, Thacker, ITU-T J.83b, DOCSIS, and/or AAPA;
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`(3) Gibson and Schiltz; and (4) Gibson, Schiltz, Goldberg, Thacker,
`ITU-T J.83b, DOCSIS, and/or AAPA;
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 315(c) and
`37 C.F.R. § 42.122(a), Petitioner’s Motion for Joinder (Paper 3) is granted,
`and Petitioner is joined as a petitioner in IPR2021-00985;
`FURTHER ORDERED that, in view of the joinder, no further filings
`shall be made in this proceeding—IPR2022-00246—and all further filings
`shall be made only in IPR2021-00985;
`FURTHER ORDERED that the asserted grounds of unpatentability on
`which the Board instituted inter partes review in IPR2021-00985 are
`unchanged and remain the only instituted grounds;
`FURTHER ORDERED that the Scheduling Order in IPR2021-00985,
`and any modifications thereto, shall govern the schedule of the joined
`proceeding;
`FURTHER ORDERED that in IPR2021-00985, Petitioner will file
`each paper, except for any paper that does not involve the other party, as a
`single, consolidated filing with the TCL Petitioners, subject to the page
`limits set forth in 37 C.F.R. § 42.24, and shall identify such filing as a
`consolidated filing;
`FURTHER ORDERED that for any consolidated filing, if Petitioner
`wishes to file an additional paper to address points of disagreement with the
`TCL Petitioners, Petitioner must request authorization from the Board to file
`a motion for an additional paper or pages;
`FURTHER ORDERED that Petitioner shall collectively designate
`attorneys with the TCL Petitioners to conduct the cross-examination of any
`witness produced by Patent Owner and the redirect of any witness produced
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`by the TCL Petitioners and Petitioner, within the timeframes set forth in
`37 C.F.R. § 42.53(c) or agreed to by the parties;
`FURTHER ORDERED that Petitioner shall collectively designate
`attorneys with the TCL Petitioners to present at the oral hearing, if requested
`and scheduled, in a consolidated argument;
`FURTHER ORDERED that the case caption in IPR2021-00985 shall
`be changed to reflect joinder of Petitioner in accordance with the attached
`example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2021-00985.
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`11
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`IPR2022-00246
`Patent 7,292,835 B2
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`For PETITIONER:
`
`Scott A. McKeown
`Steven Pepe
`Scott Taylor
`Matthew R. Shapiro
`ROPES & GRAY LLP
`scott.mckeown@ropesgray.com
`steven.pepe@ropesgray.com
`scott.taylor@ropesgray.com
`matthew.shapiro@ropesgray.com
`
`
`For PATENT OWNER:
`
`Jason S. Charkow
`Chandran B. Iyer
`Stephanie R. Mandir
`Kevin H. Sprenger
`DAIGNAULT IYER LLP
`jcharkow@daignaultiyer.com
`cbiyer@daignaultiyer.com
`smandir@daignaultiyer.com
`ksprenger@daignaultiyer.com
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`IPR2022-00246
`Patent 7,292,835 B2
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`Example Case Caption for Joined Proceeding
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TCL INDUSTRIES HOLDINGS CO., LTD., HISENSE CO., LTD.,
`and LG ELECTRONICS INC.,
`Petitioners,
`
`v.
`
`PARKERVISION, INC.,
`Patent Owner.
`____________
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`IPR2021-0098512
`Patent 7,292,835 B2
`____________
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`12 LG Electronics Inc., who filed a petition in IPR2022-00246, is joined as
`petitioner in this proceeding.
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`13
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