LGE’s Motion for Joinder
`Inter Partes Review of US 7,110,444
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`LG ELECTRONICS INC.,
`
`Petitioner,
`
`v.
`
`PARKERVISION, INC.,
`
`Patent Owner.
`
`____________
`
`Case IPR2022-00245
`
`U.S. Patent No. 7,110,444
`
`____________
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2021-00990
`
`
`
`
`Inter Partes Review of US 7,110,444
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`LG ELECTRONICS INC.,
`
`Petitioner,
`
`v.
`
`PARKERVISION, INC.,
`
`Patent Owner.
`
`____________
`
`Case IPR2022-00245
`
`U.S. Patent No. 7,110,444
`
`____________
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2021-00990
`
`
`
`
`
`LGE’s Motion for Joinder
`Inter Partes Review of US 7,110,444
`TABLE OF CONTENTS
`STATEMENT OF THE PRECISE RELIEF REQUESTED ................ 1
`STATEMENT OF MATERIAL FACTS .............................................. 2
`STATEMENT OF REASONS FOR RELIEF REQUESTED .............. 3
`Legal Standard ....................................................................................... 3
`Each of the Factors Weighs in Favor of the Board Granting the
`Motion for Joinder ................................................................................. 4
`1.
`Joinder With The TCL IPR Is Appropriate .................................... 4
`2. Petitioner Does Not Propose New Grounds of Unpatentability .... 6
`3. No Impact on the TCL IPR Trial Schedule .................................... 7
`4. Briefing and Discovery Will Be Simplified ................................... 8
`CONCLUSION ................................................................................... 10
`
`A.
`B.
`
`I.
`II.
`III.
`
`IV.
`
`
`
`
`i
`
`
`
`LGE’s Motion for Joinder
`Inter Partes Review of US 7,110,444
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Dell, Inc. v. Network-1 Security Solutions, Inc.,
`IPR2013-00385, Paper No. 17 (PTAB July 29, 2013) ......................................... 3
`Everlight Elecs. Co., v. Document Security Sys., Inc.,
`IPR2018-01260, Paper No. 12 (Nov. 14, 2018) ............................................... 5, 6
`HTC v. Parthenon Unified Memory Architecture LLC.,
`IPR2017-00512, Paper No. 12 (June 1, 2017) ...................................................... 1
`Sony Corporation v. Memory Integrity, LLC.,
`IPR2015-01353, Paper No. 11 (Oct. 5, 2015) ........................................ 4, 6, 7, 10
`Mylan Pharms. Inc. v. Novartis AG,
`IPR2015-00268, Paper 17 (Apr. 10, 2015) ........................................................... 9
`Par Pharm., Inc. v. Novartis AG,
`IPR2016-01023, Paper No. 20 (Oct. 27, 2016) .................................................... 6
`Samsung Elecs. Co., Ltd. v. Raytheon Co.,
`IPR2016-00962, Paper No. 12 (Aug. 24, 2016) ................................................... 4
`Samsung Electronics America, Inc. v. Uniloc 2017 LLC,
`IPR2018-01383, Paper No. 9 (Nov. 19, 2018) ..................................................... 4
`Statutes
`35 U.S.C. § 315(c) ................................................................................................. 1, 3
`35 U.S.C. § 316(a)(11) ............................................................................................... 8
`Other Authorities
`37 C.F.R. § 42.1(b) ................................................................................................ 1, 5
`37 C.F.R. §§ 42.22 ..................................................................................................... 1
`37 C.F.R. § 42.53 ....................................................................................................... 9
`
`ii
`
`
`
`37 C.F.R. § 42.100(c) ................................................................................................. 8
`37 CAFR. § 42.100(C).cceccssssescsssucsssssecscsssscsessuscsessusecsssuccessusessssuscsssnecsesssecsessueesssneessen 8
`37 C.F.R. § 42.122(b) ................................................................................................ 1
`37 COFAR. § 42.122(b)ccccccssecscsssucsscsssescsssscssssuscsessssecsssecsessuscssssuscsssnecsessseessssueesssneessen 1
`
`
`
`
`
`-iii-
`-iil-
`
`
`
`I.
`
`LGE’s Motion for Joinder
`Inter Partes Review of US 7,110,444
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`LG Electronics Inc. (“Petitioner” or “LGE”) respectfully submits this Motion
`
`for Joinder, concurrently with a Petition (“the LGE Petition”) for inter partes review
`
`of U.S. Patent No. 7,110,444 (“the ’444 Patent”) filed herewith.
`
`Pursuant to 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.122(b), LGE
`
`requests that this proceeding be joined with a pending inter partes review proceeding
`
`initiated by TCL Industries Holdings Co., Ltd. (“TCL”) and Hisense Co., Ltd.
`
`(“Hisense”) (collectively “the TCL Petitioners”), the petitioners in TCL Industries
`
`Holdings Co. v. ParkerVision, Inc., IPR2021-00990 (“the TCL IPR”). The Board
`
`instituted the TCL IPR on November 22, 2021, concerning the same claims of the
`
`’444 Patent at issue in the LGE Petition. This request is being submitted within the
`
`time set forth in 37 C.F.R. § 42.122(b).
`
`LGE’s request for joinder is consistent with the policy surrounding inter
`
`partes reviews, as it is the most expedient way “to secure the just, speedy, and
`
`inexpensive resolution of every proceeding.” See 37 C.F.R. § 42.1(b); see also HTC
`
`v. Parthenon Unified Memory Architecture LLC., IPR2017-00512, Paper No. 12 at
`
`5-6 (June 1, 2017). The LGE Petition and the TCL IPR are substantively identical;
`
`they contain the same grounds (based on the same prior art combinations and
`
`supporting evidence) against the same claims, consistent with PTAB joinder
`
`practice. Further, upon joining the TCL IPR, LGE will act as an “understudy” unless
`
`
`
`1
`
`
`
`LGE’s Motion for Joinder
`Inter Partes Review of US 7,110,444
`the current petitioners (TCL and Hisense) cease to actively participate in the
`
`instituted IPR. In the event that the TCL IPR is terminated with respect to the TCL
`
`Petitioners, only then does LGE intend to “step into the shoes” of the dismissed
`
`petitioners and materially participate in the joined proceedings. Accordingly, the
`
`proposed joinder will neither unduly complicate the TCL IPR nor delay its schedule.
`
`As such, joinder will promote judicial efficiency in determining the patentability of
`
`the ’444 Patent without prejudice to Patent Owner.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`1.
`On September 24, 2020, Patent Owner filed an infringement action
`
`against Hisense, ParkerVision, Inc. v. Hisense Co., No. 6:20-cv-00870
`
`(WDTX). Patent Owner asserted the ’444 Patent in the infringement
`
`action against Hisense.
`
`2.
`
`On October 12, 2020, Patent Owner filed an infringement action
`
`against TCL, ParkerVision, Inc. v. TCL Industries Holdings Co., No.
`
`6:20-cv-00945 (WDTX). Patent Owner asserted the ’444 Patent in
`
`the infringement action against TCL.
`
`3.
`
`On May 20, 2021, the TCL Petitioners filed a petition for inter partes
`
`review (IPR2021-00990) (“the TCL Petition”) requesting cancellation
`
`of claims 2, 3, and 4 of the ’444 Patent. The Board instituted the TCL
`
`IPR on November 22, 2021.
`
`
`
`2
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`
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`LGE’s Motion for Joinder
`Inter Partes Review of US 7,110,444
`On May 22, 2021, Patent Owner filed an infringement action against
`
`4.
`
`LGE, ParkerVision, Inc. v. LG Electronics, Inc., No. 6:21-cv-00520
`
`(WDTX). Patent Owner asserted the ’444 Patent in the infringement
`
`action against Petitioner.
`
`5.
`
`The LGE Petition and the TCL Petition are substantively identical;
`
`they contain the same grounds (based on the same prior art
`
`combinations and supporting evidence) against the same claims and
`
`rely on the same evidence, including a substantively identical expert
`
`declaration, consistent with PTAB joinder practice.
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`A. Legal Standard
`Pursuant to 35 U.S.C. § 315(c), the Board may grant a motion for joining an
`
`inter partes review petition with another inter partes review proceeding. See 35
`
`U.S.C. § 315(c). The Board, in determining whether to exercise its discretion to
`
`grant joinder, considers whether the joinder motion: (1) sets forth the reasons why
`
`joinder is appropriate; (2) identifies any new grounds of unpatentability asserted in
`
`the petition; (3) explains what impact (if any) joinder would have on the trial
`
`schedule for the existing review; and (4) addresses specifically how briefing and
`
`discovery may be simplified. Dell, Inc. v. Network-1 Security Solutions, Inc.,
`
`IPR2013-00385, Paper No. 17 at 4 (PTAB July 29, 2013).
`
`
`
`3
`
`
`
`B.
`
`LGE’s Motion for Joinder
`Inter Partes Review of US 7,110,444
`Each of the Factors Weighs in Favor of the Board Granting the
`Motion for Joinder
`All four factors weigh in favor of granting the motion for LGE. The LGE
`
`Petition is substantively identical to the TCL Petition. LGE does not present any
`
`new grounds of unpatentability, consistent with PTAB
`
`joinder practice.
`
`Additionally, as all substantive issues are identical and LGE will act as an
`
`“understudy,” joinder should have no impact on the pending schedule of the TCL
`
`IPR. See Sony Corporation v. Memory Integrity, LLC., IPR2015-01353, Paper No.
`
`11 at 6 (Oct. 5, 2015) (granting motion for joinder where petitioners requested an
`
`“understudy” role); see also Samsung Electronics America, Inc. v. Uniloc 2017 LLC,
`
`IPR2018-01383, Paper No. 9 at 4-5 (Nov. 19, 2018) (granting motion for joinder).
`
`Moreover, the briefing and discovery will be simplified by resolving all issues in a
`
`single proceeding. Accordingly, joinder is appropriate.
`
`1.
`Joinder With The TCL IPR Is Appropriate
`The Board “routinely grants motions for joinder where the party seeking
`
`joinder introduces identical arguments and the same grounds raised in the existing
`
`proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper No.
`
`12 at 9 (Aug. 24, 2016) (emphasis in original) (internal quotations and citations
`
`omitted). Here, joinder with the TCL IPR is appropriate because the LGE Petition
`
`submits identical arguments and the same grounds introduced in the existing TCL
`
`IPR, consistent with PTAB joinder practice. More specifically, the LGE Petition
`
`
`
`4
`
`
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`LGE’s Motion for Joinder
`Inter Partes Review of US 7,110,444
`copies verbatim the challenges set forth in the TCL Petition and relies on a
`
`substantially identical expert declaration. The only differences between the LGE
`
`Petition and the TCL Petition relate to formalities of a different party filing the
`
`petition; there are no other changes to the facts, citations, evidence, or invalidity
`
`arguments introduced in the TCL Petition. While the LGE Petition relies on a
`
`declaration from a different expert witness, LGE’s expert reviewed and agreed with
`
`the expert declaration supporting the TCL IPR, and LGE’s expert declaration is
`
`substantively identical to the TCL Petitioners’ expert declaration and does not
`
`include any new or additional opinions. See Everlight Elecs. Co., v. Document
`
`Security Sys., Inc., IPR2018-01260, Paper No. 12 at 6-7 (Nov. 14, 2018) (granting
`
`motion for joinder where petitioner submitted separate but substantially identical
`
`expert declaration). Moreover, assuming that the TCL Petitioners do not terminate
`
`their IPR before their expert is deposed, LGE will waive its expert declaration and
`
`agree to be bound by the declaration(s) and deposition(s) of the TCL Petitioners’
`
`expert. Because these proceedings are virtually identical, good cause exists for
`
`joining this proceeding with the TCL IPR so that the Board, consistent with 37
`
`C.F.R. § 42.1(b), can efficiently “secure the just, speedy, and inexpensive
`
`resolution” of the LGE Petition and the TCL Petition in a single proceeding.
`
`Moreover, granting joinder will not prejudice Patent Owner or the current
`
`petitioners, TCL and Hisense. As discussed above, the LGE Petition does not raise
`
`
`
`5
`
`
`
`LGE’s Motion for Joinder
`Inter Partes Review of US 7,110,444
`any new ground that is not raised in the TCL Petition, consistent with PTAB joinder
`
`practice. Therefore, there should be little or no additional cost to Patent Owner or
`
`TCL or Hisense due to LGE’s joinder.
`
`2.
`
`Petitioner Does Not Propose New Grounds of
`Unpatentability
`As discussed above, the LGE Petition does not assert any new grounds of
`
`patentability consistent with PTAB joinder practice. It challenges the same claims
`
`of the ’444 Patent based on the same arguments, evidence, and grounds of
`
`unpatentability as the TCL IPR consistent with PTAB joinder practice. See Sony,
`
`IPR2015-01353, Paper No. 11 at 6 (granting institution of IPR and motion for
`
`joinder where petitioners relied “on the same prior art, same arguments, and same
`
`evidence, including the same expert and a substantively identical declaration”);
`
`Everlight, IPR2018-01260, Paper No. 12 at 6-7 (granting motion for joinder where
`
`petitioner “asserts the same unpatentability grounds” and “relies on the same prior
`
`art analysis [even] though it relies on a different expert”); see also Par Pharm., Inc.
`
`v. Novartis AG, IPR2016-01023, Paper No. 20 at 14 (Oct. 27, 2016) (granting motion
`
`for joinder where petitioners “do not assert any new ground of unpatentability that
`
`is not already being considered in [an instituted IPR proceeding], rely on the same
`
`arguments and evidence, and do not require any modification to the existing
`
`schedule”).
`
`
`
`
`
`6
`
`
`
`LGE’s Motion for Joinder
`Inter Partes Review of US 7,110,444
`3.
`No Impact on the TCL IPR Trial Schedule
`Joinder should have no impact on the TCL IPR trial schedule because the LGE
`
`Petition presents no new issues or grounds of unpatentability, consistent with PTAB
`
`joinder practice. See Sony, IPR2015-01353, Paper No. 11 at 6 (granting IPR and
`
`motion for joinder where “joinder should not necessitate any additional briefing or
`
`discovery from Patent Owner beyond that already required in [the original IPR]”).
`
`There are no new issues for the Board to address, and Patent Owner will not be
`
`required to present any additional responses or arguments. Moreover, LGE will
`
`adhere to all deadlines set by the Board’s Scheduling Order for the TCL IPR.
`
`The Patent Owner’s Response will not be impacted because the issues
`
`presented in the LGE Petition are identical to the issues presented in the TCL
`
`Petition. Patent Owner will not be required to provide any additional analysis or
`
`arguments beyond what it will already provide in responding to the TCL Petition.
`
`Additionally, no additional expert discovery will be needed. While the TCL
`
`Petition relies on a declaration from a different expert witness, LGE’s expert has
`
`reviewed and agreed with the expert declaration supporting the TCL IPR, and LGE’s
`
`expert declaration is substantively identical to the TCL Petitioners’ expert
`
`declaration. Assuming the TCL Petitioners’ do not terminate their IPR before their
`
`expert is deposed, LGE agrees to rely entirely on, and be bound by, the expert
`
`declaration(s) and deposition(s) in the TCL IPR, and LGE will waive its own expert
`
`
`
`7
`
`
`
`LGE’s Motion for Joinder
`Inter Partes Review of US 7,110,444
`declaration. Accordingly, if the TCL Petitioners do not terminate their IPR
`
`prematurely, there will be no need for any deposition of LGE’s expert.
`
`Accordingly, joinder of LGE to the TCL IPR will not affect the Board’s ability
`
`to complete its review and final decision within the statutory time limits under 35
`
`U.S.C. § 316(a)(11) and 37 C.F.R. § 42.100(c).
`
`4.
`Briefing and Discovery Will Be Simplified
`LGE agrees to a complete and silent “understudy” role and will not raise any
`
`issues. Specifically, LGE agrees that, if joined, the following conditions shall apply
`
`so long as TCL and Hisense remain active parties. These conditions are less
`
`burdensome on the Patent Owner and lead petitioner than conditions that have been
`
`previously approved by the Board in similar circumstances:
`
`a)
`
`All substantive filings will be consolidated, for which the TCL
`
`Petitioners will maintain responsibility (i.e., LGE 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)
`
`LGE shall rely on the grounds instituted by the Board in the TCL IPR,
`
`and the arguments and discovery introduced by the TCL Petitioners;
`
`LGE 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;
`
`
`
`8
`
`
`
`LGE’s Motion for Joinder
`Inter Partes Review of US 7,110,444
`LGE shall be bound by any agreement between Patent Owner and the
`
`c)
`
`TCL Petitioners concerning discovery and/or depositions; and
`
`d)
`
`LGE 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 (Apr. 10, 2015) (finding the
`
`same 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)
`
`LGE agrees to be bound by the expert deposition and declarations of
`
`the TCL Petitioners’ expert and LGE will waive its own expert
`
`declaration, unless the TCL Petitioners cease to be active participants
`
`in their IPR prior to their expert’s deposition.
`
`In short, LGE agrees to participate in the joined proceedings as an
`
`“understudy” and would assume an active role only if the TCL Petitioners are
`
`dismissed from the joined proceedings or elect to transfer control to LGE.
`
`Thus, by LGE accepting an “understudy” role, Patent Owner and the TCL
`
`Petitioners can comply with the existing trial schedule without needing any
`
`
`
`9
`
`
`
`LGE’s Motion for Joinder
`Inter Partes Review of US 7,110,444
`duplicative efforts by the Board or the Patent Owner. These steps will minimize any
`
`potential complications or delay that potentially may result by joinder. See Sony,
`
`IPR2015-01353, Paper No. 11 at 6-7 (granting IPR and motion for joinder because
`
`“joinder would increase efficiency by eliminating duplicative filings and discovery,
`
`and would reduce costs and burdens on the parties as well as the Board” where
`
`petitioners agreed to an “understudy” role). LGE is further willing to agree to any
`
`other reasonable conditions the Board deems necessary.
`
`IV. CONCLUSION
`For the foregoing reasons, LGE respectfully requests that the Board grant its
`
`Petition for Inter Partes Review of the ’444 Patent and that the proceedings be joined
`
`with IPR2021-00990.
`
`
`
`
`
`
`
`10
`
`
`
`Dated: December 17, 2021
`
`LGE’s Motion for Joinder
`Inter Partes Review of US 7,110,444
`Respectfully submitted,
`/Scott A. McKeown/
`Scott A. McKeown (lead counsel)
`Reg. No. 42,866
`ROPES & GRAY LLP
`2009 Pennsylvania Avenue, NW
`Washington, DC 20006-6807
`scott.mckeown@ropesgray.com
`
`Steven Pepe (backup counsel)
`Reg. No. 42,069
`Matthew R. Shapiro (backup counsel)
`Reg. No. 70,945
`ROPES & GRAY LLP
`1211 Avenue of the Americas
`New York, NY 10036-8704
`steven.pepe@ropesgray.com
`matthew.shapiro@ropesgray.com
`
`Scott Taylor (backup counsel)
`Reg. No. 62,353
`ROPES & GRAY LLP
`Prudential Tower
`800 Boylston Street
`Boston, MA 02199-3600
`scott.taylor@ropesgray.com
`Counsel for Petitioner
`
`
`
`11
`
`
`
`LGE’s Motion for Joinder
`Inter Partes Review of US 7,110,444
`CERTIFICATE OF SERVICE
`
`The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e) and
`
`42.105(b) on the Patent Owner by FedEx of a copy of this Motion for Joinder at the
`
`correspondence address of record for the ’444 patent:
`
`Rick D. Nydegger
`rnydegger@wnlaw.com
`Workman Nydegger
`60 East South Temple, Suite 1000
`Salt Lake City, UT 84111
`
`
`
`Courtesy copies of the same documents were also served at the following
`
`email addresses of record for ParkerVision’s litigation counsel for the subject patent
`
`in the district court litigation at the U.S. District Court for the Western District of
`
`Texas, Case No. 6-21-cv-00520:
`
`Ronald M. Daignault
`rdaignault@daignaultiyer.com
`Jason S. Charkow
`jcharkow@daignaultiyer.com
`Chandran B. Iyer
`cbiyer@daignaultiyer.com
`Stephanie R. Mandir
`smandir@daignaultiyer.com
`Raymond W. Mort III
`raymort@austinlaw.com
`
`
`
`
`
`
`/Scott A. McKeown/
`Scott A. McKeown
`
`Dated: December 17, 2021
`
`
`
`
`
`
`
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