`571-272-7822
`
`Paper 8
`Date: March 17, 2022
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS, INC. and LG ELECTRONICS U.S.A., INC.,
`Petitioner,
`v.
`GESTURE TECHNOLOGY PARTNERS, LLC,
`Patent Owner.
`
`IPR2022-00090
`Patent 8,553,079 B2
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`DOUGAL, 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
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2022-00090
`Patent 8,553,079 B2
`
`I.
`INTRODUCTION
`A. Background and Summary
`Petitioner, LG Electronics, Inc. and LG Electronics U.S.A., Inc.,
`requests that we institute an inter partes review to challenge the patentability
`of claims 1–30 (the “challenged claims”) of U.S. Patent 8,553,079 B2 (Ex.
`1001, “the ’079 patent”). Paper 1 (“Petition” or “Pet.”). Concurrently with
`its Petition, Petitioner filed a Motion for Joinder with Apple Inc. v. Gesture
`Technology Partners, LLC, IPR2021-00922 (“the Apple IPR”). Paper 3
`(“Mot.”). Petitioner represents that the petitioner in the Apple IPR— Apple
`Inc.—does not oppose the Motion for Joinder. Mot. 1. Patent Owner,
`Gesture Technology Partners, LLC, argues that Petitioner’s request is
`deficient and should not be granted. Paper 7 (“Preliminary Response” or
`“Prelim. Resp.”).
`Applying the standard set forth in 35 U.S.C. § 314(a), which requires
`demonstration of a reasonable likelihood that Petitioner would prevail with
`respect to at least one challenged claim, we institute an inter partes review.1
`Further, for the reasons set forth below, we grant the Motion for Joinder.
`B. Related Matters
`The parties identify these related matters: Gesture Technology
`Partners, LLC v. Huawei Device Co., Ltd., No. 2:21-cv-00040 (E.D. Tex.);
`Gesture Technology Partners, LLC v. Samsung Electronics Co., No. 2:21-
`cv-00041 (E.D. Tex.); Gesture Technology Partners, LLC v. Apple Inc., No.
`6:21-cv-00121 (W.D. Tex.); Gesture Technology Partners, LLC v. Lenovo
`Group Ltd., No. 6:21-cv-00122 (W.D. Tex.); and Gesture Technology
`
`
`1 Our findings and conclusions at this stage are preliminary, and thus, no
`final determinations are made.
`
`2
`
`
`
`IPR2022-00090
`Patent 8,553,079 B2
`Partners, LLC v. LG Electronics, Inc., No. 6:21-cv-00123 (W.D. Tex.). Pet.
`75; Paper 5, 1. Patent Owner identifies these related Board proceedings:
`IPR2021-00917; IPR2021-00920; IPR2021-00921; IPR2021-00922;
`IPR2021-00923; IPR2021-01255; IPR2022-00091; IPR2022-00092; and
`IPR2022-00093. Paper 5, 1–2. Patent Owner identifies these related Ex
`Parte Reexaminations: No. 90/014,900; No. 90/014,901; No. 90/014,902;
`and No. 90/014,903. Id. at 3.
`In the Apple IPR, we instituted an inter partes review of claims 1–30
`of the ’079 patent as unpatentable on the following grounds:
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`Numazaki,3 Knowledge of a
`1, 2, 4–14, 17, 19, 21, 22,
`103(a)2
`24–28, 30
`POSA4
`3, 15, 23
`103(a)
`Numazaki, Numazaki ’8635
`16, 29
`103(a)
`Numazaki, DeLuca6
`18
`103(a)
`Numazaki, DeLeeuw7
`20
`103(a)
`Numazaki, Maruno8
`See Apple IPR, Paper 10 (PTAB Nov. 29, 2021) (“Apple Dec.”).
`
`
`II. INSTITUTION OF INTER PARTES REVIEW
`The Petition in this proceeding asserts the same grounds of
`unpatentability as the ones on which we instituted review in the Apple IPR.
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`Because the challenged patent was filed before March 16, 2013, we refer to
`the pre-AIA version.
`3 U.S. Patent 6,144,366, issued Nov. 7, 2000 (“Numazaki”) (Ex. 1004).
`4 A person of ordinary skill in the art (“POSA”).
`5 U.S. Patent 5,900,863, issued May 4, 1999 (“Numazaki ’863”) (Ex. 1005).
`6 U.S. Patent 6,064,354, issued May 16, 2000 (“DeLuca”) (Ex. 1006).
`7 U.S. Patent 6,088,018, issued July 11, 2000 (“DeLeeuw”) (Ex. 1007).
`8 U.S. Patent 6,191,773 B1, issued Feb. 20, 2001 (“Maruno”) (Ex. 1008).
`
`3
`
`
`
`IPR2022-00090
`Patent 8,553,079 B2
`Compare Pet. 5, with Apple Dec. 4–5. Indeed, Petitioner contends that the
`“Petition is substantively identical to the original Apple IPR petition in all
`material respects” and that “[t]he Petition here and the Apple IPR petition
`challenge the same claims of the ’079 patent on the same grounds relying on
`the same prior art and evidence, including a declaration identical in
`substance from the same expert.” Mot. 2; see also, id. at 6–7.
`Patent Owner’s Preliminary Response presents a number of arguments
`as to why the Petition should not be granted. Prelim. Resp. 5–31. We address
`each argument below and ultimately institute an inter partes review on the
`same grounds as the ones on which we instituted review in the Apple IPR.
`A. Grounds of Unpatentability
`Patent Owner’s Preliminary Response repeats the same arguments
`over the Petition’s grounds of unpatentability that Patent Owner presented in
`the Apple IPR. Compare Prelim. Resp. 5–21 with Apple IPR, Paper 8, 5–21.
`Thus, for the same reasons set forth in our institution decision in the Apple
`IPR, we determine that the information presented in the Petition shows a
`reasonable likelihood that Petitioner would prevail in showing that claims 1–
`30 would have been obvious. See Apple Dec. 7–17. Accordingly, we
`institute an inter partes review on the same basis as we instituted review in
`the Apple IPR.
`B. 35 U.S.C. § 314(a)
`Patent Owner argues that “[t]he Petition should be denied . . . under
`35 U.S.C. § 314(a) in view of the General Plastic9 factors.” Prelim. Resp.
`
`
`9 General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357,
`Paper 19 at 17 (PTAB Sept. 6, 2017) (precedential).
`
`4
`
`
`
`IPR2022-00090
`Patent 8,553,079 B2
`21–22. Patent Owner argues that we should apply the General Plastic
`factors because:
`Even when Petitioner files a motion to join, the Board first
`decides whether to institute the IPR before reaching the joinder
`decision. Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper
`9 at 5 (PTAB. Oct. 28, 2020) (precedential) [(“Apple v. Uniloc”)]
`(“Under 35 U.S.C. § 315(c), the discretion of the Director to join
`a party to an ongoing IPR is premised on the Director’s
`determination that the petition warrants institution.”).
`Id. at 21–22.
`In Apple v. Uniloc, the petitioner filed a first petition for inter partes
`review that was denied and then, after another party filed an additional
`petition for inter partes review of the patent, the petitioner filed its second
`petition with a motion for joinder. Apple v. Uniloc at 6. However, not only
`was that the second petition for inter partes review filed by the petitioner,
`but the petitioner was also barred under 35 U.S.C. § 315(b) from filing any
`further petitions. Id. at 6–7. Thus, under these facts, among others, the panel
`exercised its discretion to decline institution of the petition after applying the
`General Plastic factors. Id. at 13.
`Here, however, none of the unique facts in Apple v. Uniloc are
`present. The Petition is substantially identical to the petition in IPR2021-
`00922 (“the Apple IPR”), which it seeks to join, and it presents us with a
`standard “me too” petition with a motion for joinder. Patent Owner presents
`no unique facts here that separate the Petition from most other “me too”
`petitions with a motion for joinder, with the possible exception that Patent
`Owner sued both Petitioner and the petitioner in the Apple IPR for patent
`
`5
`
`
`
`IPR2022-00090
`Patent 8,553,079 B2
`infringement, which is those parties’ only connection to one another
`identified by Patent Owner. See Prelim. Resp. 25.10
`The statutes and rules governing inter partes review expressly provide
`for joinder. See 35 U.S.C. § 315(c); 37 C.F.R. 42.122(b). For example, 35
`U.S.C. § 315(c) states:
`Joinder.—
`If the Director institutes an inter partes review, the Director, in
`his or her discretion, may join as a party to that inter partes
`review any person who properly files a petition under section 311
`that the Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter partes
`review under section 314.
`Under Patent Owner’s reasoning (see Prelim. Resp. 24–29)11,
`essentially any petition with a motion for joinder would be denied under the
`General Plastic factors, even though our governing statutes and rules
`expressly allow the practice. Patent Owner does not address why we should
`ignore our governing statutes and rules allowing joinder to use the facts
`surrounding a motion for joinder to decline to institute the petition, and we
`decline to do so.
`
`
`10 Patent Owner does not argue that Petitioner and the petitioner in the Apple
`IPR are also accused of infringement based on a product that involves both
`petitioners, as in Valve (IPR2019-00062, Paper 11, 9–10), rather Patent
`Owner merely states that they filed suit against both parties in separate suits,
`but on the same day.
`11 E.g., prior petition by a first petitioner; same prior art, that the second
`petitioner became aware off at least before filing the second petition, i.e.,
`when the prior petition was filed; delay between filing of the two petitions;
`finite resources of the Board will be called upon if first petitioner leaves the
`contest and joinder (second) petitioner steps in.
`
`6
`
`
`
`IPR2022-00090
`Patent 8,553,079 B2
`C. 35 U.S.C. § 315(d)
`Patent Owner argues that “[i]n view of the finite resources of the
`Board and . . . co-pending [ex parte] reexamination [No. 90/014,900 of the
`’079 patent], the Director should deny the Petition” under 35 U.S.C.
`§ 315(d). Prelim. Resp. 29.
`35 U.S.C. § 315(d) states: “if another proceeding or matter involving
`the patent is before the Office, the Director may determine the manner in
`which the inter partes review or other proceeding or matter may proceed,
`including providing for stay, transfer, consolidation, or termination of any
`such matter or proceeding.”
`Though we agree that 35 U.S.C. § 315(d) gives the Director authority
`to determine how to proceed in the present circumstances, we decline the
`invitation to deny the Petition based on the existence of co-pending ex parte
`reexamination No. 90/014,900 and our finite resources.
`D. Jurisdiction over Expired Patents
`Patent Owner argues that the USPTO does not have jurisdiction over
`expired patents. Prelim. Resp. 30–31. Rather, Patent Owner argues, the
`USPTO only has jurisdiction over patents with claims that can be amended
`or cancelled. Id. at 30. Patent Owner states that, as explained by the Supreme
`Court, “Congress [has] significant latitude to assign [the] adjudication of
`public rights to entities other than Article III courts,” including for the
`USPTO to “reexamine—and perhaps cancel—a patent claim in an inter
`partes review.” Id. at 30 (quoting Oil States Energy Servs., LLC v. Greene’s
`Energy Grp., LLC, 138 S. Ct. 1365, 1368, 1374 (2018). However, Patent
`Owner argues that this authority does not extend to expired patents because
`the public franchise associated with an issued patent no longer exists after
`expiration. Id. Thus, it is argued, the USPTO no longer has jurisdiction, even
`
`7
`
`
`
`IPR2022-00090
`Patent 8,553,079 B2
`though the patent owner “may be entitled to collect damages” for patent
`infringement, because “the patent owner[] no longer has the right to exclude
`others” and the USPTO has nothing to cancel or amend. Id. at 30–31.
`Patent Owner reasons that:
`Expiration removes the patent from the [US]PTO’s jurisdiction
`and returns it to the sole jurisdiction of the Article III courts,
`which have exclusive authority to govern claims for damages. If
`this were not so, the [US]PTO would purport to have authority
`to retroactively modify a public franchise that no longer exists,
`in a setting where the expired public franchise does not enjoy any
`presumption of validity and in which amendment of claims is no
`longer permitted.
`Id. at 31.
`Inter partes review of patents, whether expired or not, fits within the
`USPTO’s mandate “for the granting and issuing of patents” (35 U.S.C.
`§ 2(a)(1)), for as the Supreme Court has stated, “[i]nter partes review is ‘a
`second look at an earlier administrative grant of a patent’” (Oil States
`Energy Servs., 138 S. Ct. at 1374 (quoting Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2144 (2016)). Our rules have also made clear inter partes
`review covers expired patents. 37 C.F.R. 42.100(b) (2012); see also, e.g., 83
`Fed. Reg. 51341 (Oct. 11, 2018) (Changes to the Claim Construction
`Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
`and Appeal Board)12 (“The claim construction standard adopted in this final
`rule also is consistent with the same standard that the Office has applied in
`interpreting claims of expired patents and soon-to-be expired patents. See,
`e.g., Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1279
`(Fed. Cir. 2017) (noting that ‘[t]he Board construes claims of an expired
`
`
`12 Available at https://www.federalregister.gov/d/2018-22006/p-13.
`
`8
`
`
`
`IPR2022-00090
`Patent 8,553,079 B2
`patent in accordance with Phillips . . . [and] [u]nder that standard, words of a
`claim are generally given their ordinary and customary meaning’).”).
`Further, the statutes governing inter partes review do not limit them to
`non-expired patents. For example, 35 U.S.C. § 311(b), which sets forth the
`scope of inter partes review merely refers to patents, with no mention of the
`expiration date. Further, 35 U.S.C. § 311(c) entitled “Filing Deadline”
`makes no mention of the expiration date of the patent. Elsewhere, 35 U.S.C.
`§ 315 does limit the filing of IPRs based on civil actions and the serving of
`complaints, but again makes no mention of the expiration date of the patent.
`Patent Owner does not identify any statute or legal precedent that expressly
`limits inter partes review to non-expired patents.
`Patent Owner fails to adequately explain why the Patent Office’s
`authority to take a second look at an earlier administrative grant of a patent
`ends when the patent term expires even though the rights granted by the
`patent are not yet exhausted.
`For all of these reasons, we do not agree that the Board lacks
`jurisdiction over expired patents.
`E. Conclusion
`For the foregoing reasons, we have determined that there is a
`reasonable likelihood that the Petitioner would prevail with respect to at
`least one of the claims challenged in the Petition. We therefore institute trial
`as to all challenged claims on all grounds stated in the Petition.
`
`
`III. MOTION FOR JOINDER
`The statutory provision governing joinder in inter partes review
`proceedings (35 U.S.C. § 315(c)) reads:
`
`9
`
`
`
`IPR2022-00090
`Patent 8,553,079 B2
`If the Director institutes an inter partes review, the Director, in
`his or her discretion, may join as a party to that inter partes
`review any person who properly files a petition under section 311
`that the Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter partes
`review under section 314.
`As the moving party, Petitioner bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`should: set forth the reasons joinder is appropriate; identify any new grounds
`of unpatentability asserted in the petition; and explain what impact (if any)
`joinder would have on the trial schedule for the existing review. See Kyocera
`Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24,
`2013).
`Petitioner timely filed the Motion no later than one month after
`institution of the Apple IPR. See 37 C.F.R. § 42.122 (b). As noted, the
`Petition in this case asserts the same unpatentability grounds on which we
`instituted review in the Apple IPR. See Mot. 2. Petitioner also relies on the
`same prior art analysis and expert testimony submitted by the Apple
`petitioner. See id. Indeed, the Petition is nearly identical to the petition filed
`by the Apple petitioner. See id. at 6. Thus, this inter partes review does not
`present any ground or matter not already at issue in the Apple IPR. Id.
`If joinder is granted, Petitioner agrees to assume an “understudy role”
`and “will only assume the lead role in the proceedings if Apple is no longer
`a party to the proceedings or unable to advance arguments for one or more
`claims, or grounds, for example, because of § 315(e)(1).” Id. at 2. Petitioner
`further represents that it “will not advance any arguments separate from
`those advanced by Apple in the consolidated filings.” Id. at 3. Because
`
`10
`
`
`
`IPR2022-00090
`Patent 8,553,079 B2
`Petitioner expects to participate only in a limited capacity, Petitioner submits
`that joinder will not impact the trial schedule for the Apple IPR. Id.
`Patent Owner did not file an Opposition to the Motion for Joinder.
`Patent Owner improperly13 attempts to oppose the Motion for Joinder in the
`Patent Owner Preliminary Response. See Prelim. Resp. 21–29. Patent Owner
`argues that the Motion should be denied under 35 U.S.C. §§ 314, 315 for the
`same reasons discussed and rejected above with respect to institution of the
`Petition. See supra §§ II.B–C.
`Patent Owner waived its arguments in opposition to the Motion for
`Joinder by choosing not to file such an opposition. To allow Patent Owner to
`circumvent the Rules would deny Petitioner their right to reply to arguments
`that should have been presented in an Opposition to the Motion for Joinder.
`See 37 C.F.R. § 42.25.
`Based on the above, we determine that joinder with the Apple IPR is
`appropriate under the circumstances. Accordingly, we grant Petitioner’s
`Motion for Joinder.
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, inter partes review of claims 1–30 of U.S. Patent
`8,553,079 B2 is instituted on all grounds in the Petition;
`FURTHER ORDERED that the Motion for Joinder with IPR2021-
`00922 is granted;
`
`
`13 An opposition was due by December 29, 2021 (see 37 C.F.R. § 42.25.),
`while the Patent Owner Preliminary Response was filed February 18, 2022.
`
`11
`
`
`
`IPR2022-00090
`Patent 8,553,079 B2
`FURTHER ORDERED that IPR2022-00090 is terminated and joined
`with IPR2021-00922, pursuant to 37 C.F.R. §§ 42.72, 42.122, wherein
`Petitioner will maintain a secondary role in the proceeding, unless and until
`the Apple petitioner ceases to participate as a petitioner in the inter partes
`review;
`FURTHER ORDERED that the Scheduling Order in place for
`IPR2021-00922 (Paper 11) remains unchanged, and shall govern the joined
`proceeding;
`FURTHER ORDERED that all future filings in the joined proceeding
`are to be made only in IPR2021-00922;
`FURTHER ORDERED that the case caption in IPR2021-00922 shall
`be changed to reflect joinder of LG Electronics, Inc. and LG Electronics
`U.S.A., Inc. as a petitioner in accordance with the below example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2021-00922.
`
`
`
`
`
`
`12
`
`
`
`IPR2022-00090
`Patent 8,553,079 B2
`
`Example Caption
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`APPLE, INC., LG ELECTRONICS, INC., and
`LG ELECTRONICS U.S.A., INC.,
`Petitioner,
`v.
`GESTURE TECHNOLOGY PARTNERS, LLC,
`Patent Owner.
`_______________
`
`IPR2021-0092214
`Patent 8,553,079 B2
`_______________
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`14 IPR2022-00090 (LG Electronics, Inc. and LG Electronics U.S.A., Inc.)
`has been joined with this proceeding.
`
`13
`
`
`
`IPR2022-00090
`Patent 8,553,079 B2
`For PETITIONER:
`
`Matthew Satchwell
`Gianni Minutolli
`Paul Steadman
`DLA PIPER (US) LLP
`Matthew.satchwell@dlapiper.com
`Gianni.minutoli@dlapiper.com
`Paul.steadman@dalpiper.com
`
`For PATENT OWNER:
`
`Todd Landis
`John Wittenzellner
`WILLIAMS SIMONS & LANDIS PLLC
`tlandis@wsltrial.com
`johnw@wsltrial.com
`
`14
`
`