`571-272-7822
`
`
`Paper 8
`Entered: May 9, 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.
`
`IPR2022-00092
`Patent 8,878,949 B2
`
`
`
`
`
`
`
`
`
`Before PATRICK R. SCANLON, GREGG I. ANDERSON, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`SCANLON, 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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`IPR2022-00092
`Patent 8,878,949 B2
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`I.
`
`INTRODUCTION
`
`LG Electronics, Inc. and LG Electronics U.S.A., Inc. (collectively,
`
`“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes
`
`review of claims 1–18 of U.S. Patent No. 8,878,949 B2 (Ex. 1001, “the ’949
`
`patent”). Petitioner also filed a Motion for Joinder (Paper 3, “Mot.”)
`
`requesting that it be joined to IPR2021-00921 (the “Apple IPR”) filed by
`
`Apple Inc. (“Apple”). Mot. 1. Gesture Technology Partners, LLC (“Patent
`
`Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”).
`
`Applying the standard set forth in 35 U.S.C. § 314(a), which requires
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`demonstration of a reasonable likelihood that Petitioner would prevail with
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`respect to at least one challenged claim, we institute an inter partes review.1
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`Further, for the reasons set forth below, we grant the Motion for Joinder.
`
`II. BACKGROUND
`
`A. Real Parties in Interest
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`Petitioner identifies itself as the real party in interest. Pet. 62. Patent
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`Owner identifies itself as the real party in interest. Paper 5, 1.
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`B. Related Matters
`
`The parties identify the following proceedings as related matters
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`involving the ’949 patent: 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.); Gesture Technology
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`Partners, LLC v. LG Electronics, Inc., No. 6:21-cv-00123 (W.D. Tex.);
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`Gesture Technology Partners, LLC v. Huawei Device Co., Ltd., No. 2:21-cv-
`
`
`1 Our findings and conclusions at this stage are preliminary, and thus, no
`final determinations are made.
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`2
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`
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`IPR2022-00092
`Patent 8,878,949 B2
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`00040 (E.D. Tex.); and Gesture Technology Partners, LLC v. Samsung
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`Electronics Co., Ltd., No. 2:21-cv-00041 (E.D. Tex.). Pet. 62; Paper 5, 1.
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`In addition, Patent Owner identifies the following inter partes review
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`proceedings as related matters: IPR2021-00917; IPR2021-00920; IPR2021-
`
`00921; IPR2021-00922; and IPR2021-00923. Paper 5, 1–2. Patent Owner
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`also identifies these related Ex Parte Reexaminations: No. 90/014,900;
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`No. 90/014,901; No. 90/014,902; and No. 90/014,903. Id. at 3.
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`In the Apple IPR, the Board instituted an inter partes review of claims
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`1–18 of the ’949 patent on the following grounds:2
`
`Claim(s) Challenged
`1–18
`6, 12, 17
`
`35 U.S.C. §
`103(a)
`103(a)
`
`Reference(s)/Basis
`Numazaki,3 Nonaka4
`Numazaki, Nonaka, Aviv5
`
`See Apple IPR, Paper 8 (PTAB Dec. 13, 2021) (“Apple Dec.”).
`
`III. INSTITUTION OF INTER PARTES REVIEW
`
`The Petition in this proceeding asserts the same grounds of
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`unpatentability as the ones on which we instituted review in the Apple IPR.
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`Compare Pet. 6, 10–53, with Apple Dec. 5. Indeed, Petitioner contends that
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`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
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`challenge the same claims of the ’949 patent on the same grounds relying on
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’949 patent has an
`effective filing date before the March 16, 2013, effective date of the
`applicable AIA amendments, we apply the pre-AIA version of 35 U.S.C.
`§ 103.
`3 US 6,144,366, issued Nov. 7, 2000 (Ex. 1004).
`4 JP H4-73631, published Mar. 9, 1992 (Ex. 1005).
`5 US 5,666,157, issued Sept. 9, 1997 (Ex. 1006).
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`3
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`IPR2022-00092
`Patent 8,878,949 B2
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`the same prior art and evidence, including a declaration identical in
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`substance from the same expert.” Mot. 2; see also id. at 6–7.
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`Patent Owner’s Preliminary Response presents a number of arguments
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`as to why the Petition should not be granted. Prelim. Resp. 6–40. We
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`address each argument below and ultimately institute an inter partes review
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`on the same grounds as the ones on which we instituted review in the Apple
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`IPR.
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`A. Grounds of Unpatentability
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`Patent Owner’s Preliminary Response repeats the same arguments
`
`over the Petition’s grounds of unpatentability that Patent Owner presented in
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`the Apple IPR. Compare Prelim. Resp. 6–29, with Apple IPR, Paper 6 at
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`6–28. Thus, for the same reasons set forth in our institution decision in the
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`Apple IPR, we determine that the information presented in the Petition
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`shows a reasonable likelihood that Petitioner would prevail in showing that
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`claims 1–18 would have been obvious. See Apple Dec. 7–24. Accordingly,
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`we institute an inter partes review on the same basis as we instituted review
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`in the Apple IPR.
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`B. 35 U.S.C. § 314(a)
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`Patent Owner argues that “[t]he Petition should be denied . . . under
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`35 U.S.C. § 314(a) in view of the General Plastic6 factors.” Prelim.
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`Resp. 30 (footnote added). Patent Owner argues that we should apply the
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`General Plastic factors because:
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`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 (P.T.A.B. Oct. 28, 2020) (precedential) [(“Apple v.
`
`
`6 General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357,
`Paper 19 at 17 (PTAB Sept. 6, 2017) (precedential).
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`4
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`IPR2022-00092
`Patent 8,878,949 B2
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`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.”).
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`Prelim. Resp. 30.
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`In Apple v. Uniloc, the petitioner filed a first petition for inter partes
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`review that was denied and then, after another party filed an additional
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`petition for inter partes review of the patent, the petitioner filed its second
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`petition with a motion for joinder. Apple v. Uniloc, Paper 9 at 6. However,
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`not only was that the second petition for inter partes review filed by the
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`petitioner, but the petitioner was also barred under 35 U.S.C. § 315(b) from
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`filing any further petitions. Id. at 6–7. Thus, under these facts, among
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`others, the panel exercised its discretion to decline institution of the petition
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`after applying the General Plastic factors. Id. at 13.
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`Here, however, none of the unique facts in Apple v. Uniloc are
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`present. The Petition is substantially identical to the petition in IPR2021-
`
`00921 (the “Apple IPR”), which it seeks to join, and it presents us with a
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`standard “me too” petition with a motion for joinder. Patent Owner presents
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`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
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`Owner sued both Petitioner and the petitioner in the Apple IPR for patent
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`infringement, which is those parties’ only connection to one another
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`identified by Patent Owner. See Prelim. Resp. 32–33.7
`
`
`7 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 Corporation v. Electonic Scripting Products, Inc.,
`IPR2019-00062, Paper 11 at 9–10 (PTAB Apr. 2, 2019) (precedential),
`rather, Patent Owner merely states that they filed suit against both parties in
`separate suits, but on the same day.
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`5
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`IPR2022-00092
`Patent 8,878,949 B2
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`The statutes and rules governing inter partes review expressly provide
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`for joinder. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b). For example,
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`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. 30–37)8,
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`essentially any petition with a motion for joinder would be denied under the
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`General Plastic factors, even though our governing statutes and rules
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`expressly allow the practice. Patent Owner does not address why we should
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`ignore our governing statutes and rules allowing joinder to use the facts
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`surrounding a motion for joinder to decline to institute the petition, and we
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`decline to do so.
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`C. 35 U.S.C. § 315(d)
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`Patent Owner argues that “[i]n view of the finite resources of the
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`Board and . . . co-pending [ex parte] reexamination [No. 90/014,903 of the
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`’949 patent], the Director should deny the Petition” under 35 U.S.C.
`
`§ 315(d). Prelim. Resp. 38.
`
`
`8 E.g., prior petition by a first petitioner; same prior art, that the second
`petitioner became aware of 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
`contest and joinder (second) petitioner steps in.
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`6
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`IPR2022-00092
`Patent 8,878,949 B2
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`35 U.S.C. § 315(d) states: “if another proceeding or matter involving
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`the patent is before the Office, the Director may determine the manner in
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`which the inter partes review or other proceeding or matter may proceed,
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`including providing for stay, transfer, consolidation, or termination of any
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`such matter or proceeding.”
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`Though we agree that 35 U.S.C. § 315(d) gives the Director authority
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`to determine how to proceed in the present circumstances, we decline the
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`invitation to deny the Petition based on the existence of co-pending ex parte
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`reexamination No. 90/014,903 and our finite resources.
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`D. Jurisdiction over Expired Patents
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`Patent Owner argues that the Patent Office does not have jurisdiction
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`over expired patents. Prelim. Resp. 38–40. Rather, Patent Owner argues,
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`the Patent Office only has jurisdiction over patents with claims that can be
`
`amended or cancelled. Id. at 38–39. Patent Owner states that, as explained
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`by the Supreme Court, “Congress [has] significant latitude to assign [the]
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`adjudication of public rights to entities other than Article III courts,”
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`including for the Patent Office to “reexamine—and perhaps cancel—a patent
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`claim in an inter partes review.” Id. (quoting Oil States Energy Servs., LLC
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`v. Greene’s Energy Grp., LLC, 138 S. Ct. 1365, 1368, 1374 (2018))
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`(alterations in original). However, Patent Owner argues that this authority
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`does not extend to expired patents because the public franchise associated
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`with an issued patent no longer exists after expiration. Id. at 39. Thus, it is
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`argued, the Patent Office no longer has jurisdiction, even though the Patent
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`Owner “may be entitled to collect damages” for patent infringement,
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`because “the patent owner[] no longer has the right to exclude others” and
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`the Patent Office has nothing to cancel or amend. Id.
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`Patent Owner reasons that:
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`7
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`Expiration removes the patent from the [Patent Office]’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 [Patent Office] 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.
`
`Inter partes review of patents, whether expired or not, fits within the
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`USPTO’s mandate “for the granting and issuing of patents” (35 U.S.C.
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`§ 2(a)(1)), for as the Supreme Court has stated, “[i]nter partes review is ‘a
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`second look at an earlier administrative grant of a patent’” (Oil States
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`Energy Servs., 138 S. Ct. at 1374 (quoting Cuozzo Speed Techs., LLC v. Lee,
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`136 S. Ct. 2131, 2144 (2016))). Our rules have also made clear inter partes
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`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
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`Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
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`and Appeal Board)9 (“The claim construction standard adopted in this final
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`rule also is consistent with the same standard that the Office has applied in
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`interpreting claims of expired patents and soon-to-be expired patents. See,
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`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 patent in
`
`accordance with Phillips . . . [and] [u]nder that standard, words of a claim
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`are generally given their ordinary and customary meaning” (alterations in
`
`original)).
`
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`9 Available at https://www.federalregister.gov/d/2018-22006/p-13.
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`8
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`Further, the statutes governing inter partes review do not limit them to
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`non-expired patents. For example, 35 U.S.C. § 311(b), which sets forth the
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`scope of inter partes review, merely refers to patents with no mention of the
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`expiration date. Further, 35 U.S.C. § 311(c), entitled “Filing Deadline,”
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`makes no mention of the expiration date of the patent. Elsewhere, 35 U.S.C.
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`§ 315 does limit the filing of IPRs based on civil actions and the serving of
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`complaints, but again makes no mention of the expiration date of the patent.
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`Patent Owner does not identify any statute or legal precedent that expressly
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`limits inter partes review to non-expired patents.
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`Patent Owner fails to adequately explain why the Patent Office’s
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`authority to take a second look at an earlier administrative grant of a patent
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`ends when the patent term expires even though the rights granted by the
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`patent are not yet exhausted.
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`For all of these reasons, we do not agree that the Board lacks
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`jurisdiction over expired patents.
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`E. Conclusion
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`For the foregoing reasons, we determine that there is a reasonable
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`likelihood that the Petitioner will prevail with respect to at least one of the
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`claims challenged in the Petition. We therefore institute trial as to all
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`challenged claims on all grounds stated in the Petition.
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`IV. MOTION FOR JOINDER
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`The statutory provision governing joinder in inter partes review
`
`proceedings (35 U.S.C. § 315(c)) reads:
`
`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
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`9
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`IPR2022-00092
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`response, determines warrants the institution of an inter partes
`review under section 314.
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`As the moving party, Petitioner bears the burden of proving that it is
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`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
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`should: set forth the reasons joinder is appropriate; identify any new grounds
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`of unpatentability asserted in the petition; and explain what impact (if any)
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`joinder would have on the trial schedule for the existing review. See
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`Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr.
`
`24, 2013).
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`Petitioner timely filed the Motion no later than one month after
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`institution of the Apple IPR. See 37 C.F.R. § 42.122 (b). As noted, the
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`Petition in this case asserts the same unpatentability grounds on which we
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`instituted review in the Apple IPR. See Mot. 2. Petitioner also relies on the
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`same prior art analysis and expert testimony submitted by the Apple
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`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
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`present any ground or matter not already at issue in the Apple IPR. Id.
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`If joinder is granted, Petitioner agrees to assume an “understudy role”
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`and “will only assume the lead role in the proceedings if Apple is no longer
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`a party to the proceedings or unable to advance arguments for one or more
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`claims, or grounds, for example, because of § 315(e)(1).” Id. at 2.
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`Petitioner further represents that it “will not advance any arguments separate
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`from those advanced by Apple in the consolidated filings.” Id. at 3.
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`Because Petitioner expects to participate only in a limited capacity,
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`Petitioner submits that joinder will not impact the trial schedule for the
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`Apple IPR. Id.
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`10
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`IPR2022-00092
`Patent 8,878,949 B2
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`Patent Owner did not file an Opposition to the Motion for Joinder.
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`Patent Owner improperly10 attempts to oppose the Motion for Joinder in the
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`Patent Owner Preliminary Response. See Prelim. Resp. 30–38. Patent
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`Owner argues that the Motion should be denied under 35 U.S.C. §§ 314, 315
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`for the same reasons discussed and rejected above with respect to institution
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`of the Petition. See supra §§ III.B–C.
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`Patent Owner waived its arguments in opposition to the Motion for
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`Joinder by choosing not to file such an opposition. To allow Patent Owner
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`to circumvent the Rules would deny Petitioner their right to reply to
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`arguments that should have been presented in an Opposition to the Motion
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`for Joinder. See 37 C.F.R. § 42.25.
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`Based on the above, we determine that joinder with the Apple IPR is
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`appropriate under the circumstances. Accordingly, we grant Petitioner’s
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`Motion for Joinder.
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`V. ORDER
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`In consideration of the foregoing, it is hereby:
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`ORDERED that an inter partes review of claims 1–18 of the ’949
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`patent is instituted with respect to all grounds set forth in the Petition;
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`FURTHER ORDERED that the Motion for Joinder with IPR2021-
`
`00921 is granted;
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`FURTHER ORDERED that IPR2022-00092 is terminated and joined
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`with IPR2021-00921, pursuant to 37 C.F.R. §§ 42.72, 42.122, wherein
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`Petitioner will maintain a secondary role in the proceeding, unless and until
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`10 An opposition was due by December 5, 2021 (see 37 C.F.R. § 42.25.),
`while the Patent Owner Preliminary Response was filed February 18, 2022.
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`11
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`IPR2022-00092
`Patent 8,878,949 B2
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`the Apple petitioner ceases to participate as a petitioner in the inter partes
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`review;
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`FURTHER ORDERED that the Scheduling Order in place for
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`IPR2021-00921 (Paper 9) remains unchanged, and shall govern the joined
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`proceeding;
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`FURTHER ORDERED that all future filings in the joined proceeding
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`are to be made only in IPR2021-00921;
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`FURTHER ORDERED that the case caption in IPR2021-00921 shall
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`be changed to reflect joinder of LG Electronics, Inc. and LG Electronics
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`U.S.A., Inc. as a petitioner in accordance with the below example; and
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`FURTHER ORDERED that a copy of this Decision shall be entered
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`into the record of IPR2021-00921.
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`12
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`Example Caption
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`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.
`_______________
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`IPR2021-0092111
`Patent 8,878,949 B2
`_______________
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`11 IPR2022-00092 (LG Electronics, Inc. and LG Electronics U.S.A., Inc.)
`has been joined with this proceeding.
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`13
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`IPR2022-00092
`Patent 8,878,949 B2
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`FOR PETITIONER:
`
`Matthew D. Satchwell
`Gianni Minutoli
`Paul R. Steadman
`DLA PIPER LLP
`matthew.satchwell@dlapiper.com
`gianni.minutoli@us.dlapiper.com
`paul.steadman@dlapiper.com
`
`
`FOR PATENT OWNER:
`
`Todd E. Landis
`John Wittenzellner
`WILLIAMS SIMONS & LANDIS PLLC
`tlandis@wsltrial.com
`johnw@wsltrial.com
`
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`14
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