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
`
`Case No. IPR2022-00090
`U.S. Patent No. 8,553,079
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b))
`
`EAST\185894369.1
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`
`___________________________________________
`
`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
`
`Case No. IPR2022-00090
`U.S. Patent No. 8,553,079
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b))
`
`EAST\185894369.1
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`
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`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), LG Electronics,
`
`Inc. and LG Electronics U.S.A., Inc. (“Petitioner”) moves for joinder with the Inter
`
`Partes Review of U.S. Patent No. 8,553,079 (“the ’079 Patent”), Apple Inc. vs.
`
`Gesture Technology Partners LLC, IPR2021-00922 (“the Apple IPR”), for which
`
`the petition for Inter Partes Review was filed on May 18, 2021, and is currently
`
`pending. IPR2021-00922, paper 1. Petitioner requests that action on this motion be
`
`held in abeyance until, and only if, the Apple IPR is instituted.1 This motion is
`
`timely because it is filed before institution of the Apple IPR, i.e., “no later than one
`
`month after the institution date” of the Apple IPR. 37 C.F.R. § 42.122(b); Central
`
`Security Group – Nationwide, Inc. v. Ubiquitous Connectivity, LP, IPR2019-01609,
`
`Paper 11, at 8-9 (P.T.A.B. Feb. 26, 2020) (stating that § 42.122(b) is “[t]he only
`
`timing requirement for a motion for joinder”). Petitioner understands that the
`
`petitioner in the Apple IPR (“Apple”) does not oppose Petitioner’s request for
`
`joinder.
`
`1 Should the Board deny institution of the Apple IPR, this Motion should be
`
`considered moot and Petitioner respectfully requests that the Board consider this
`
`petition independently of the Apple IPR.
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`-1-
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`Petitioner requests institution of this Petition for Inter Partes Review. This
`
`Petition is substantively identical to the original Apple IPR petition in all material
`
`respects. The only substantive changes are in the Introduction to identify the correct
`
`Petitioner, in the discussion of the Fintiv factors to accurately describe the
`
`procedural history of the underlying litigation between Petitioner and Patent Owner,
`
`and in mandatory notices under 37 C.F.R. § 42.8(b). The 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.
`
`Thus, the Petition warrants institution under 35 U.S.C. § 314, and 35 U.S.C.
`
`§ 315(c) permits Petitioner’s joinder to the Apple IPR.
`
`Further, if joined, Petitioner agrees to adhere to all applicable deadlines in the
`
`Apple IPR and coordinate all filings with Apple in the Apple IPR. Apple will
`
`maintain the lead role in the proceedings so long as it is a party to the proceedings
`
`and is not estopped under § 315(e)(1), and Petitioner here will assume an understudy
`
`role. Petitioner 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). Petitioner agrees to
`
`consolidated filings for all substantive papers in the proceeding. Apple and
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`-2-
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`Petitioner will be jointly responsible for the consolidated filings. Absent a Board
`
`order precluding the Apple from making arguments that would otherwise be
`
`available to Petitioner, Petitioner will not advance any arguments separate from
`
`those advanced by Apple in the consolidated filings. These limitations will avoid
`
`lengthy and duplicative briefing. Also, Petitioner will not seek additional
`
`depositions or deposition time, and will coordinate deposition questioning and
`
`hearing presentations with Apple. Petitioner agrees to the foregoing conditions even
`
`in the event that other IPRs filed by other, third-party petitioners are joined with the
`
`Apple IPR.
`
`Joinder will help efficiently resolve the disputes among the parties. By
`
`joinder, a single Board decision may dispose of the issues raised in the Apple IPR
`
`for all interested parties. Further, the Patent Owner has asserted the ’079 patent in
`
`district court against Petitioner. Joinder will estop Petitioner from asserting in
`
`district court those issues resolved in a final decision from the Apple IPR, thus
`
`narrowing the issues in the district court. See 35 U.S.C. § 315(e)(2). Finally, joinder
`
`would not complicate or delay the Apple IPR and would not adversely affect any
`
`schedule set in that proceeding. In sum, joinder would promote efficient
`
`adjudication in multiple forums. On the other hand, if instituted, maintaining the
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`Petitioner’s IPR proceeding separate from that of the Apple IPR would entail
`
`needless duplication of effort.
`
`Joinder will not unduly prejudice any party. Because joinder will not add any
`
`new substantive issues, delay the schedule, burden deponents, or increase needless
`
`filings, any additional costs on the Patent Owner would be minimal. On the other
`
`hand, denial of joinder would prejudice Petitioner. Their interests may not be
`
`adequately protected in the Apple IPR proceedings, particularly if Apple settles with
`
`the Patent Owner. Petitioner should be allowed to join in a proceeding affecting a
`
`patent asserted against them.
`
`II.
`
`BACKGROUND AND RELATED PROCEEDINGS
`Gesture Technology Partners, LLC (the “Patent Owner”) is the owner of the ’079
`
`patent. Gesture Technology Partners, LLC has asserted the ’079 patent against
`
`Petitioner in Gesture Technology Partners, LLC v. LG Electronics, Inc. et al., No.
`
`6:21-cv-00123 (W.D. Tex.) (transferred to District of New Jersey as Case No. 2:21-
`
`cv-19234). On May 18, 2021, Apple filed its IPR petition, IPR2021-00922, against
`
`the ’079 patent. Petitioner here timely moves for joinder with the Apple IPR.
`
`-4-
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`
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`III.
`
`STATEMENT OF REASONS FOR THE REQUESTED RELIEF
`A.
`Legal Standards and Applicable Rules
`The Board has discretion to join a properly filed IPR petition to an IPR
`
`proceeding. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); see also Dell Inc. v.
`
`Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 19, at 4-6; Sony Corp. v.
`
`Yissum Res. & Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013-00326, Paper
`
`15, at 3-4; Motorola Mobility LLC v. Proxyconn, Inc., IPR2013-00109, Paper 15, at
`
`3-4. “The Board will determine whether to grant joinder on a case-by-case basis,
`
`taking into account the particular facts of each case, substantive and procedural
`
`issues, and other considerations.” Dell, IPR2013-00385, Paper 19, at 3. The
`
`movants bear the burden of proof in establishing entitlement to the requested relief.
`
`37 C.F.R. §§ 42.20(c), 42.122(b). A motion for joinder should:
`
`(1) set forth the 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.
`
`Dell, IPR2013-00385, Paper 19, at 4.
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`-5-
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`B.
`
`Joinder will not add any new grounds of unpatentability or have
`an impact on the trial schedule.
`The Petition is based on the same grounds and combinations of prior art that
`
`are at issue in the Apple IPR. For simplicity and efficiency, Petitioner has
`
`substantially copied the substance of Apple’s petition and accompanying
`
`declaration. Petitioner does not seek to introduce grounds or claims not in the Apple
`
`IPR and seeks only to join the proceeding as instituted. Petitioner retained the same
`
`expert, who has submitted an identical declaration as in the Apple IPR. The Patent
`
`Owner should not require any discovery beyond that which it may need in the Apple
`
`IPR—nor should the Board permit any. The Petition presents no new substantive
`
`issues relative to the Apple IPR and does not seek to broaden the scope of the Apple
`
`IPR.
`
`For efficiency’s sake, Petitioner will:
`
`1. Adhere to all applicable deadlines in the Apple IPR;
`
`2. Submit “consolidated” filings with the Apple, as set forth above in the
`
`statement of precise relief requested;
`
`3. Refrain from requesting or reserving any additional depositions or
`
`deposition time;
`
`4. Refrain from requesting or reserving additional oral hearing time; and
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`5. Assume a second-chair role as long as Apple remains in the
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`proceeding.2
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`In view of these provisions, joinder should not affect the trial schedule.
`
`C.
`
`Joinder will promote efficiency by consolidating issues, avoiding
`wasteful duplication, and preventing inconsistency.
`Petitioner presents substantially identical arguments and supporting evidence
`
`as the Apple IPR. Joinder will simplify briefing and discovery. Given that the Apple
`
`IPR and the Petition address the same prior art and grounds for rejection of the same
`
`claims, joining these proceedings allows for joint submissions and discovery, further
`
`streamlining the proceedings. This should promote efficiency and conserve the
`
`Board’s and the parties’ resources. Further, joinder will estop Petitioner from
`
`asserting in district court those issues resolved in a final written decision in the Apple
`
`IPR, thus narrowing the issues in the district court actions. See 35 U.S.C.
`
`§ 315(e)(2).
`
`2 These limitations are consistent with previously granted joinder motions. See, e.g.,
`
`Enzymotech Ltd. v. Neptune Techs., IPR2014-00556, Paper 19 (July 9, 2014)
`
`(agreeing to procedural concessions, such as “consolidated” responses); Gillette Co.
`
`v. Zond, IPR2014-01016, Paper 13 (Nov. 10, 2014) (same); SAP Am. Inc. v.
`
`Clouding IP, LLC, IPR2014-00306, Paper 13 (May 19, 2014) (same).
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`-7-
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`Joinder is Appropriate
`D.
`The Board has previously stated that it is “mindful of a policy preference for
`
`joining a party that does not present new issues.” Enzymotec Ltd. v. Neptune Techs
`
`& Bioresources, Inc. IPR2014-00556, Paper No. 19 at 6 (July 9, 2014) (citing 157
`
`CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office
`
`anticipates that joinder will be allowed as of right – if an inter partes review is
`
`instituted on the basis of a petition, for example, a party that files an identical petition
`
`will be joined to that proceeding, and thus allowed to file its own briefs and make
`
`its own arguments.”)).
`
`Here, because Petitioner seeks institution on the grounds, evidence, and
`
`arguments advanced, or that will be advanced, in the Apple IPR, institution is
`
`warranted under 35 U.S.C. § 314 and Petitioner’s joinder to the Apple IPR is
`
`appropriate under 35 U.S.C. § 315(c). No new grounds of unpatentability are
`
`asserted. As explained above, joinder would not adversely impact the trial schedule,
`
`briefing, or discovery in the Apple IPR, and the remaining equities compel joinder.
`
`Petitioner is filing this Petition and joinder motion to ensure that the trial is
`
`completed in the event that Apple reaches settlement with Patent Owner.
`
`1. Without joinder, Petitioner will be prejudiced
`A denial of joinder would prejudice Petitioner. Its substantial interests, as
`
`parties against whom the ’079 patent has been asserted in federal district court
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`actions, may not be adequately protected by Apple in the Apple IPR proceedings.
`
`For example, Petitioner has an interest that the Apple IPR reach a final determination
`
`to facilitate a timely and cost-effective end to the controversy between Petitioner and
`
`the Patent Owner. Petitioner should be allowed to join in a proceeding affecting a
`
`patent asserted against it.
`
`Joinder will not unduly prejudice any party
`2.
`The Petition raises issues already before the Board and long known to the
`
`Patent Owner. Addressing patent validity in this proceeding serves the parties’ and
`
`Board’s interests.
`
`IV. GENERAL PLASTICS IS INAPPLICABLE
`Petitioner respectfully submits application of the General Plastic analysis is
`
`inapplicable here. In General Plastic, the Board set forth a series of factors that may
`
`be analyzed for follow-on petitions to help conserve the finite resources of the Board.
`
`Here, both Petitioner and Apple submitted separate, independent petitions. In the
`
`current motion, Petitioner merely seeks to join Apple’s petition and does not present
`
`any new grounds. As such, Petitioner respectfully submits that General Plastic does
`
`not apply in this circumstance because Petitioner would be taking an understudy role
`
`and the Board’s finite resources would not be impacted. Moreover, a joinder petition
`
`in these circumstances is not the type of serial petition to which General Plastic
`
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`applies, as there is no strategic advantage to be gained by filing this additional
`
`petition, and there are no concerns of “road mapping” the Patent Owner’s strategy
`
`because Petitioner has submitted a petition that is substantively identical to Apple’s
`
`petition. See AT&T Services, Inc. v. Broadband iTV, Inc., IPR2021-00649, Paper
`
`12 at 7-17 (August 25, 2021) (instituting IPR on a “me-too” petition despite being
`
`filed after the PTAB’s institution decision on the primary petition.
`
`In the event the Board does analyze the General Plastic factors, those factors
`
`heavily weigh in favor of instituting the present IPR. General Plastic Indus. Co.,
`
`Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, slip op. at 16 (PTAB Sept. 6,
`
`2017) (Paper 19) (precedential as to § II.B.4.i).
`
`The first factor is whether the same petitioner previously filed a petition
`
`directed to the same claims of the same patent. Petitioner has not previously filed a
`
`petition against the ’079 Patent. Accordingly, this factor weighs in favor of
`
`institution.
`
`The second factor is whether at the time of filing the first petition the petitioner
`
`knew or should have known of the prior art asserted in the second petition. This
`
`factor is neutral, if not inapplicable, in the General Plastic analysis. Here, Apple’s
`
`petition and Petitioner’s Petition share the same prior art because Petitioner’s
`
`Petition is a “copy” of Apple’s petition. Because Petitioner is merely seeking to join
`
`-10-
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`EAST\185894369.1
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`in an understudy role, the factor is neutral, at best, in determining whether to
`
`institute.
`
`The third factor is whether at the time of filing of the second petition the
`
`petitioner already received the patent owner’s preliminary response to the first
`
`petition or received the Board’s decision on whether to institute review in the first
`
`petition. Patent owner has only recently responded to the Apple petition, and the
`
`Board has not decided whether to institute review on that IPR. Further, because the
`
`present Petition is essentially a copy of the prior Apple Petition and submitted with
`
`a motion for joinder stating that Petitioner will serve an understudy role, the Petition
`
`is not an attempt to harass the Patent Owner or otherwise engage in serial, tactical
`
`filings. Thus, this factor weighs against denial of joinder/institution.
`
`The fourth factor is the length of time elapsed between the time the petitioner
`
`learned of the prior art asserted in the second petition and filing of the second
`
`petition, and the fifth factor is whether the petitioner provides adequate explanation
`
`for the time elapsed between the filings of multiple petitions directed to the same
`
`claims of the same patent. In the context of a joinder motion where Petitioner will
`
`be taking an understudy role, these factors are inapplicable. In any event, Petitioner
`
`filed its Petition just five months after Apple filed its petition.
`
`-11-
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`EAST\185894369.1
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`The sixth factor is the finite resources of the Board. Allowing Petitioner’s
`
`joinder motion where it will serve in an understudy role will not impact the Board’s
`
`resources beyond those resources the Board dedicates to the instant joinder motion.
`
`The seventh factor is the requirement under 35 U.S.C. § 316(a)(11) to issue a
`
`final determination not later than 1 year after the date on which the Director notices
`
`institution of review. As noted above, joining Petitioner should not impact the
`
`schedule. Accordingly, this factor weighs in favor of institution.
`
`An eighth factor identified by the Board in Shenzhen is the extent to which
`
`the petitioner and any prior petitioner(s) were similarly situated defendants or
`
`otherwise realized a similar-in-time hazard regarding the challenged patent.
`
`Shenzhen Silver Star Intelligent Tech. Co., Ltd. v. iRobot Corp., IPR2018-00898,
`
`Paper 9 at 7, 13-14 (PTAB Oct. 1, 2018) (noting “the purpose of proposed Factor 8
`
`is to discourage tactical filing of petitions over time by parties that faced the same
`
`threat at the same time” such that earlier petitions are filed as “test case(s)” to gain
`
`“tactical advantage”). Because Petitioner’s Petition does not introduce any new
`
`grounds of unpatentability and will effectively merge into a single proceeding with
`
`Apple’s IPR, no such tactical advantage is gained here.
`
`Thus, none of the General Plastic factors weighs against institution and
`
`joinder in this situation.
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`V.
`
`CONCLUSION
`Joinder will not affect the substance, procedure, or scheduling of the Apple
`
`IPR. Petitioner files this motion under the statutory joinder provisions as
`
`contemplated by the AIA. Joinder will simplify the issues and promote efficiency,
`
`justice, and speed.
`
`For the foregoing reasons, Petitioner respectfully requests inter partes review
`
`of U.S. Patent No. 8,533,079 and joinder with Apple Inc. vs. Gesture Technology
`
`Partners LLC, IPR2021-00922.
`
`Dated: November 5, 2021
`
`Respectfully submitted,
`
`
`By:/ Matthew D. Satchwell /
`Matthew D. Satchwell (Reg. No. 58,870)
`Email: matthew.satchwell@dlapiper.com
`DLA Piper LLP (US)
`444 West Lake Street, Suite 900
`Chicago, Illinois 60606
`Telephone: (312) 368-2111
`Fax: (312) 236-7516
`
`Counsel for Petitioner
`
`-13-
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`EAST\185894369.1
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned hereby
`
`certifies that a copy of the foregoing Motion for Joinder was provided to Patent
`
`Owner by serving the correspondence address of record for the ’079 Patent as listed
`
`on PAIR:
`
`Warner Norcross + Judd LLP
`Intellectual Property Group
`150 Ottawa Ave. NW, Suite 1500
`Grand Rapids, MI 49503
`Further, a courtesy copy of this Petition for Inter Partes Review was sent via
`
`email to Patent Owner’s litigation counsel:
`
`Fred I. Williams (fwilliams@wsltrial.com)
`Michael Simons (msimons@wsltrial.com)
`Todd E. Landis (tlandis@wsltrial.com)
`John Wittenzellner (johnw@wsltrial.com)
`In addition, a copy of this Motion for Joinder and supporting material is
`
`being electronically served in its entirety on counsel for Petitioner in related Case
`
`No. IPR2021-00922.
`
`Adam P. Seitz (Adam.Seitz@erispe.com)
`Paul R. Hart (Paul.Hart@erispe.com)
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`EAST\185894369.1
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`Dated: November 5, 2021
`
`Respectfully submitted,
`
`
`By:/ Matthew D. Satchwell /
`Matthew D. Satchwell (Reg. No. 58,870)
`Email: matthew.satchwell@dlapiper.com
`DLA Piper LLP (US)
`444 West Lake Street, Suite 900
`Chicago, Illinois 60606
`Telephone: (312) 368-2111
`Fax: (312) 236-7516
`
`Counsel for Petitioner
`
`EAST\185894369.1
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