Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper 9
`Date: April 12, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`LG ELECTRONICS INC.,
`Petitioner,
`v.
`
`PARKERVISION, INC.,
`Patent Owner.
`____________
`
`IPR2022-00245
`Patent 7,110,444 B1
`____________
`
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
` Paper 9
`Date: April 12, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`LG ELECTRONICS INC.,
`Petitioner,
`v.
`
`PARKERVISION, INC.,
`Patent Owner.
`____________
`
`IPR2022-00245
`Patent 7,110,444 B1
`____________
`
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`
`
`IPR2022-00245
`Patent 7,110,444 B1
`
`
`I.
`
`INTRODUCTION
`
`Background
`
`LG Electronics Inc. (“Petitioner”) filed a Petition (Paper 3, “Pet.”)
`requesting institution of inter partes review of claims 2–4 (“the Challenged
`Claims”) of U.S. Patent No. 7,110,444 B1 (Ex. 1001, “the ’444 patent”).
`Concurrently with its Petition, Petitioner filed a Motion for Joinder seeking
`to join TCL Industries Holdings Co. v. ParkerVision, Inc., IPR2021-00990
`(the “TCL IPR”). Paper 4 (“Motion for Joinder” or “Motion”).1
`ParkerVision, Inc. (“Patent Owner”) filed a paper in which it waives
`its Preliminary Response and does not oppose Petitioner’s Motion for
`Joinder. Paper 8 (Patent Owner’s Waiver of Its Preliminary Response and
`Statement of Non-Opposition to Motion for Joinder).
`An inter partes review may be instituted only if “the information
`presented in the petition . . . and any [preliminary] response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a)
`(2018). For the reasons given below, we institute inter partes review of the
`Challenged Claims of the ’444 patent. We also grant Petitioner’s Motion for
`Joinder and join Petitioner to IPR2021-00990.
`
`Related Proceedings
`
`The parties identify the following as related matters: ParkerVision,
`Inc. v. Intel Corp., 6:20-cv-00108 (W.D. Tex.); ParkerVision, Inc. v. TCL
`Industries Holdings Co., Ltd. et al., No. 6:20-cv-00945 (W.D. Tex.);
`
`
`1 Petitioner refers to the petitioner entities in IPR2021-00990, TCL
`Industries Holdings Company and Hisense Company Limited, as “the TCL
`Petitioners.” Motion 1.
`
`2
`
`
`
`IPR2022-00245
`Patent 7,110,444 B1
`
`ParkerVision, Inc. v. Hisense Co., Ltd. et al., No. 6:20-cv-00870 (W.D.
`Tex.); ParkerVision, Inc. v. LG Electronics Inc., No. 6:21-cv-00520 (W.D.
`Tex.); and Intel Corp. v. ParkerVision, Inc., IPR2020-01265. Pet. 5–6;
`Paper 7 (Patent Owner’s Mandatory Notices), 1. Petitioner also identifies
`ParkerVision, Inc. v. Buffalo Inc., No. 6:20-cv-01009 (W.D. Tex.), and
`ParkerVision, Inc. v. ZyXEL Communications Corp., No. 6:20-cv-01010
`(W.D. Tex. ),2 as related matters. Pet. 5. Additionally, Petitioner challenges
`several claims of U.S. Patent No. 7,292,835 B2, owned by Patent Owner, in
`IPR2022-00246. Id. at 6.
`
`Real Parties in Interest
`
`Petitioner identifies itself and LG Electronics U.S.A., Inc. as real
`parties in interest. Pet. 5. Patent Owner identifies itself as the sole real party
`in interest. Paper 7, 1.
`
`
`2 The district court granted a joint motion to dismiss with prejudice and this
`case is now closed. See Ex. 3001 (Docket Entry 25, Order dated Sept. 27,
`2001).
`
`3
`
`
`
`IPR2022-00245
`Patent 7,110,444 B1
`
`
`
`
`The Asserted Grounds of Unpatentability and Declaration
`Evidence
`Petitioner challenges the patentability of claims 2–4 of the ’444 patent
`on the following grounds:
`Claim(s) Challenged
`2, 3
`2–4
`
`35 U.S.C. §3
`103(a)
`103(a)
`
`Reference(s)/Basis
`Tayloe,4 TI Datasheet5
`Lam,6 Enz,7 Tayloe
`
`Pet. 7.
`Additionally, Petitioner supports its challenge with a Declaration of
`Dean P. Neikirk, Ph.D.8 Ex. 1099.
`
`II.
`INSTITUTION OF INTER PARTES REVIEW
`The Petition is substantively identical to the petition in the TCL IPR.
`Compare Pet. with TCL IPR, Paper 1; see also Pet. 1 (stating that “[t]he
`instant Petition is substantively identical to the petition filed by the TCL
`
`3 The Leahy-Smith America Invents Act (“AIA”) includes revisions to
`35 U.S.C. § 103 that became effective on March 16, 2013. Because the
`’444 patent has an effective filing date before March 16, 2013, we apply the
`pre-AIA version of the statutory basis for unpatentability.
`4 U.S. Patent No. 6,230,000 B1, issued May 8, 2001 (Ex. 1004, “Tayloe”).
`5 SN74CBT3253 Dual 1-of-4 FET Multiplexer/Demultiplexer (rev. ed.
`May 1998) (Ex. 1005, “TI Datasheet”).
`6 U.S. Patent No. 5,937,013, issued Aug. 10, 1999 (Ex. 1006, “Lam”).
`7 Circuit Techniques for Reducing the Effects of Op-Amp Imperfections:
`Autozeroing, Correlated Double Sampling, and Chopper Stabilization,
`Proceedings of the IEEE, Vol. 84, No. 11, Nov. 1996 (Ex. 1007, “Enz”).
`8 Dr. Neikirk’s Declaration relies on two declarations first submitted in the
`TCL IPR and filed in this proceeding as well—a Declaration of Matthew B.
`Shoemake, Ph.D. (Ex. 1002) and a Declaration of Maureen H. Honeycutt
`(Ex. 1009).
`
`4
`
`
`
`IPR2022-00245
`Patent 7,110,444 B1
`
`Petitioners, challenging the same claims of the ’444 patent on the same
`grounds and relying on substantively identical expert testimony”). For
`substantially the same reasons discussed in the Institution Decision in the
`TCL IPR, which we incorporate expressly herein, Petitioner demonstrates a
`reasonable likelihood of prevailing with respect to at least one of the
`Challenged Claims of the ’444 patent. TCL IPR, Paper 9 (Institution
`Decision).
`Accordingly, we institute inter partes review of claims 2–4 of the
`’444 patent on the asserted grounds of unpatentability set forth in the
`Petition. At this stage of the proceeding, we have not made a final
`determination as to the unpatentability of any challenged claim or any
`underlying factual or legal issue.
`
`III. MOTION FOR JOINDER
`“Any request for joinder must be filed . . . no later than one month
`after the institution date of any inter partes review for which joinder is
`requested.” 37 C.F.R. § 42.122(b) (2021). The Board instituted an inter
`partes review in the TCL IPR on November 22, 2021. TCL IPR, Paper 9.
`On December 17, 2021, Petitioner filed its Motion for Joinder requesting to
`join the TCL IPR. Thus, Petitioner’s Motion for Joinder is timely.
`Acting under the designation of the Director, we have discretion to
`determine whether to join a party to an instituted inter partes review.
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(a). We may
`join as a party to [an instituted] inter partes review any person
`who properly files a petition under section 311 that . . . after
`receiving a preliminary response under section 313 or the
`expiration of the time for filing such a response . . . warrants the
`institution of an inter partes review under section 314.
`
`5
`
`
`
`IPR2022-00245
`Patent 7,110,444 B1
`
`35 U.S.C. § 315(c). We have explained that a motion for joinder should:
`(1) set forth reasons why joinder is appropriate; (2) identify any new
`grounds of unpatentability asserted in the petition; (3) explain what impact,
`if any, joinder would have on the trial schedule for the existing review; and
`(4) address specifically how briefing and discovery may be simplified.
`Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB
`Apr. 24, 2013).
`In its Motion, Petitioner asserts that joinder is appropriate because
`(1) the Petition “submits identical arguments and the same grounds” as “the
`existing TCL IPR”; (2) the only differences between the petitions in each
`proceeding “relate to formalities of a different party filing the petition”;
`(3) “there are no other changes to the facts, citations, evidence, or invalidity
`arguments introduced in the TCL Petition”; (4) although Petitioner relies on
`a different expert witness (Dr. Neikirk), he “reviewed and agreed with the
`expert declaration supporting” the TCL petition and submitted a declaration
`that is “substantively identical” to Dr. Shoemake’s declaration submitted in
`the TCL IPR and “does not include any new or additional opinions”; and
`(5) Petitioner “will waive its expert declaration and agree to be bound by the
`declaration(s) and deposition(s) of the TCL Petitioners’ expert.” Motion 4–
`5.
`
`Additionally, Petitioner represents that “[j]oinder should have no
`impact on the TCL IPR trial schedule because the . . . Petition presents no
`new issues or grounds of unpatentability.” Motion 7. Petitioner contends
`that “[t]here are no new issues for the Board to address, and Patent Owner
`will not be required to present any additional responses or arguments.
`Moreover, [Petitioner] will adhere to all deadlines set by the Board’s
`
`6
`
`
`
`IPR2022-00245
`Patent 7,110,444 B1
`
`Scheduling Order for the TCL IPR.” Id. Petitioner represents that,
`“[a]ssuming the TCL Petitioners[] do not terminate their IPR before their
`expert is deposed, [Petitioner] agrees to rely entirely on, and be bound by,
`the expert declaration(s) and deposition(s) in the TCL IPR, and [Petitioner]
`will waive its own expert declaration.” Id. at 7–8. Thus, Petitioner contends
`that “joinder of [Petitioner] to the TCL IPR will not affect the Board’s
`ability to complete its review and final decision within the statutory time
`limits.” Id. at 8.
`Regarding briefing and discovery, Petitioner “agrees to a complete
`and silent ‘understudy’ role and will not raise any issues.” Motion 8.
`Petitioner sets forth the following conditions to apply to the joined
`proceeding as long as TCL and Hisense remain active parties:
`(a) All substantive filings will be consolidated, for which the
`TCL Petitioners will maintain responsibility (i.e.,
`[Petitioner] will rely on the filings of the TCL Petitioners[]),
`unless a filing solely concerns issues that do not involve the
`TCL Petitioners (e.g., Mandatory Notices);
`(b) [Petitioner] shall rely on the grounds instituted by the Board
`in the TCL IPR, and the arguments and discovery introduced
`by the TCL Petitioners; [Petitioner] shall not be permitted to
`raise any new grounds not already instituted by the Board in
`the TCL IPR, or introduce any argument or discovery not
`already introduced by the TCL Petitioners;
`(c) [Petitioner] shall be bound by any agreement between Patent
`Owner and the TCL Petitioners concerning discovery and/or
`depositions; and
`(d) [Petitioner] at deposition shall not request any direct, cross
`examination or redirect time beyond that permitted for the
`TCL Petitioners alone under either 37 C.F.R. § 42.53 or any
`agreement between Patent Owner and the TCL Petitioners.
`See Mylan Pharms. Inc. v. Novartis AG, IPR2015-00268,
`Paper 17 at 5-6 ([PTAB] Apr. 10, 2015) (finding the same
`
`7
`
`
`
`IPR2022-00245
`Patent 7,110,444 B1
`
`
`proposed limitations “are consistent with the ‘understudy’
`role that Petitioner agrees to assume, as well as Petitioner’s
`assertion that its presence would not require introducing any
`additional arguments, briefing, or discovery.”).
`(e) [Petitioner] agrees to be bound by the expert deposition and
`declarations of the TCL Petitioners’ expert and [Petitioner]
`will waive its own expert declaration, unless the TCL
`Petitioners cease to be active participants in their IPR prior
`to their expert’s deposition.
`Id. at 8–9.
`As noted above, Patent Owner indicates that it “does not oppose
`Petitioner LG Electronics, Inc.’s Motion for Joinder.” Paper 8, 2.
`In view of Petitioner’s representations and non-opposition by Patent
`Owner, Petitioner has persuaded us that joinder is appropriate. We,
`therefore, grant Petitioner’s Motion for Joinder.
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner has demonstrated a reasonable
`likelihood that it would prevail in showing that at least one claim of the
`’444 patent is unpatentable. Additionally, we grant Petitioner’s Motion for
`Joinder and join Petitioner to IPR2021-00990. In view of the joinder, no
`further documents shall be filed by the parties in this proceeding.
`
`V. ORDER
`
`Accordingly, it is:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review is
`instituted as to claims 2–4 of the ’444 patent on each ground set forth in the
`Petition;
`
`8
`
`
`
`IPR2022-00245
`Patent 7,110,444 B1
`
`
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 315(c) and
`37 C.F.R. § 42.122(a), Petitioner’s Motion for Joinder (Paper 4) is granted,
`and Petitioner is joined as a petitioner in IPR2021-00990;
`FURTHER ORDERED that, in view of the joinder, no further filings
`shall be made in this proceeding—IPR2022-00245—and all further filings
`shall be made only in IPR2021-00990;
`FURTHER ORDERED that the asserted grounds of unpatentability on
`which the Board instituted inter partes review in IPR2021-00990 are
`unchanged and remain the only instituted grounds;
`FURTHER ORDERED that the Scheduling Order in IPR2021-00990,
`and any modifications thereto, shall govern the schedule of the joined
`proceeding;
`FURTHER ORDERED that in IPR2021-00990, Petitioner will file
`each paper, except for any paper that does not involve the other party, as a
`single, consolidated filing with the TCL Petitioners, subject to the page
`limits set forth in 37 C.F.R. § 42.24, and shall identify such filing as a
`consolidated filing;
`FURTHER ORDERED that for any consolidated filing, if Petitioner
`wishes to file an additional paper to address points of disagreement with the
`TCL Petitioners, Petitioner must request authorization from the Board to file
`a motion for an additional paper or pages;
`FURTHER ORDERED that Petitioner shall collectively designate
`attorneys with the TCL Petitioners to conduct the cross-examination of any
`witness produced by Patent Owner and the redirect of any witness produced
`by the TCL Petitioners and Petitioner, within the timeframes set forth in
`37 C.F.R. § 42.53(c) or agreed to by the parties;
`
`9
`
`
`
`IPR2022-00245
`Patent 7,110,444 B1
`
`
`FURTHER ORDERED that Petitioner shall collectively designate
`attorneys with the TCL Petitioners to present at the oral hearing, if requested
`and scheduled, in a consolidated argument;
`FURTHER ORDERED that the case caption in IPR2021-00990 shall
`be changed to reflect joinder of Petitioner in accordance with the attached
`example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2021-00990.
`
`
`
`
`
`
`
`
`
`
`
`
`10
`
`
`
`IPR2022-00245
`Patent 7,110,444 B1
`
`For PETITIONER:
`
`Scott A. McKeown
`Steven Pepe
`Scott Taylor
`Matthew R. Shapiro
`ROPES & GRAY LLP
`scott.mckeown@ropesgray.com
`steven.pepe@ropesgray.com
`scott.taylor@ropesgray.com
`matthew.shapiro@ropesgray.com
`
`
`For PATENT OWNER:
`
`Jason S. Charkow
`Chandran B. Iyer
`Stephanie R. Mandir
`Kevin H. Sprenger
`DAIGNAULT IYER LLP
`jcharkow@daignaultiyer.com
`cbiyer@daignaultiyer.com
`smandir@daignaultiyer.com
`ksprenger@daignaultiyer.com
`
`
`
`11
`
`
`
`IPR2022-00245
`Patent 7,110,444 B1
`
`
`Example Case Caption for Joined Proceeding
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TCL INDUSTRIES HOLDINGS CO., LTD., HISENSE CO., LTD.,
`and LG ELECTRONICS INC.,
`Petitioners,
`
`v.
`
`PARKERVISION, INC.,
`Patent Owner.
`____________
`
`IPR2021-009909
`Patent 7,110,444 B1
`____________
`
`
`
`
`
`
`
`
`
`
`
`
`
`9 LG Electronics Inc., who filed a petition in IPR2022-00245, is joined as
`petitioner in this proceeding.
`
`12
`
`
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