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. IPR2022-00093
`U.S. Patent No. 8,194,924
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b))
`
`EAST\186146952.1
`
`
`___________________________________________
`
`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. IPR2022-00093
`U.S. Patent No. 8,194,924
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b))
`
`EAST\186146952.1
`
`
`
`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. 8,194,924 (“the ’924 Patent”), Apple Inc. vs.
`
`Gesture Technology Partners LLC, IPR2021-00923 (“the Apple IPR”), for which
`
`the petition for Inter Partes Review was filed on May 26, 2021, and is currently
`
`pending. IPR2021-00923, 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.
`
`-1-
`
`EAST\186146952.1
`
`
`
`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 ’924 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
`
`-2-
`
`EAST\186146952.1
`
`
`
`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 ’924 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
`
`-3-
`
`EAST\186146952.1
`
`
`
`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 ’924
`
`patent. Gesture Technology Partners, LLC has asserted the ’924 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 26, 2021, Apple filed its IPR petition, IPR2021-00923, against
`
`the ’924 patent. Petitioner here timely moves for joinder with the Apple IPR.
`
`-4-
`
`EAST\186146952.1
`
`
`
`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.
`
`-5-
`
`EAST\186146952.1
`
`
`
`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
`
`-6-
`
`EAST\186146952.1
`
`
`
`5. Assume a second-chair role as long as Apple remains in the
`
`proceeding.2
`
`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).
`
`-7-
`
`EAST\186146952.1
`
`
`
`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 ’924 patent has been asserted in federal district court
`-8-
`
`EAST\186146952.1
`
`
`
`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
`
`-9-
`
`EAST\186146952.1
`
`
`
`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 ’924 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-
`
`EAST\186146952.1
`
`
`
`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-
`
`EAST\186146952.1
`
`
`
`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.
`
`EAST\186146952.1
`
`-12-
`
`
`
`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. 8,194,924 and joinder with Apple Inc. vs. Gesture Technology
`
`Partners LLC, IPR2021-00923.
`
`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-
`
`EAST\186146952.1
`
`
`
`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 ’924 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. IPR2021-00923.
`
`Adam P. Seitz (Adam.Seitz@erispe.com)
`Paul R. Hart (Paul.Hart@erispe.com)
`
`EAST\186146952.1
`
`
`
`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\186146952.1
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
