`Inter Partes Review of US 7,292,835
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`LG ELECTRONICS INC.,
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`Petitioner,
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`v.
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`PARKERVISION, INC.,
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`Patent Owner.
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`____________
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`Case IPR2022-00246
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`U.S. Patent No. 7,292,835
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`____________
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`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2021-00985
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`LGE’s Motion for Joinder
`Inter Partes Review of US 7,292,835
`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
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`A.
`B.
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`I.
`II.
`III.
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`IV.
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`i
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`LGE’s Motion for Joinder
`Inter Partes Review of US 7,292,835
`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
`Dell, Inc. v. Network-1 Security Solutions, Inc.,
`IPR2013-00385, Paper No. 17 (PTAB July 29, 2013) ......................................... 4
`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
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`ii
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`LGE’s Motion for Joinder
`Inter Partes Review of US 7,292,835
`37 C.F.R. § 42.100(c) ................................................................................................. 8
`37 C.F.R. § 42.122(b) ................................................................................................ 1
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`-iii-
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`I.
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`LGE’s Motion for Joinder
`Inter Partes Review of US 7,292,835
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`LG Electronics Inc. (“Petitioner” or “LGE”) respectfully submits this Motion
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`for Joinder, concurrently with a Petition (“the LGE Petition”) for inter partes review
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`of U.S. Patent No. 7,292,835 (“the ’835 Patent”) filed herewith.
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`Pursuant to 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.122(b), LGE
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`requests that this proceeding be joined with a pending inter partes review proceeding
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`initiated by TCL Industries Holdings Co., Ltd. (“TCL”), Hisense Co., Ltd.
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`(“Hisense”) and ZyXEL Communications Corp. (“ZyXEL”)1 (collectively “the TCL
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`Petitioners”), the petitioners in TCL Industries Holdings Co. v. ParkerVision, Inc.,
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`IPR2021-00985 (“the TCL IPR”). The Board instituted the TCL IPR on November
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`19, 2021, concerning the same claims of the ’835 Patent at issue in the LGE Petition.
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`This request is being submitted within the time set forth in 37 C.F.R. § 42.122(b).
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`LGE’s request for joinder is consistent with the policy surrounding inter
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`partes reviews, as it is the most expedient way “to secure the just, speedy, and
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`inexpensive resolution of every proceeding.” See 37 C.F.R. § 42.1(b); see also HTC
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`v. Parthenon Unified Memory Architecture LLC., IPR2017-00512, Paper No. 12 at
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`5-6 (June 1, 2017). The LGE Petition and the TCL IPR are substantively identical;
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`1 On October 7, 2021, the Board terminated ZyXEL as a Petitioner in the TCL IPR.
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`See Paper 13 in IPR2021-00985.
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`LGE’s Motion for Joinder
`Inter Partes Review of US 7,292,835
`they contain the same grounds (based on the same prior art combinations and
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`supporting evidence) against the same claims, consistent with PTAB joinder
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`practice. Further, upon joining the TCL IPR, LGE will act as an “understudy” unless
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`the current petitioners (TCL and Hisense) cease to actively participate in the
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`instituted IPR. In the event that the TCL IPR is terminated with respect to the TCL
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`Petitioners, only then does LGE intend to “step into the shoes” of the dismissed
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`petitioners and materially participate in the joined proceedings. Accordingly, the
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`proposed joinder will neither unduly complicate the TCL IPR nor delay its schedule.
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`As such, joinder will promote judicial efficiency in determining the patentability of
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`the ’835 Patent without prejudice to Patent Owner.
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`II.
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`STATEMENT OF MATERIAL FACTS
`1.
`On September 24, 2020, Patent Owner filed an infringement action
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`against Hisense, ParkerVision, Inc. v. Hisense Co., No. 6:20-cv-00870
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`(WDTX). Patent Owner asserted the ’835 Patent in the infringement
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`action against Hisense.
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`2.
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`On October 12, 2020, Patent Owner filed an infringement action
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`against TCL, ParkerVision, Inc. v. TCL Industries Holdings Co., No.
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`6:20-cv-00945 (WDTX). Patent Owner asserted the ’835 Patent in
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`the infringement action against TCL.
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`2
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`LGE’s Motion for Joinder
`Inter Partes Review of US 7,292,835
`On May 20, 2021, the TCL Petitioners filed a petition for inter partes
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`3.
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`review (IPR2021-00985) (“the TCL Petition”) requesting cancellation
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`of claims 1, 12–15, and 17–20 of the ’835 Patent. The Board
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`instituted the TCL IPR on November 19, 2021.
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`4.
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`On May 22, 2021, Patent Owner filed an infringement action against
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`LGE, ParkerVision, Inc. v. LG Electronics, Inc., No. 6:21-cv-00520
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`(WDTX). Patent Owner asserted the ’835 Patent in the infringement
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`action against Petitioner.
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`5.
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`The LGE Petition and the TCL Petition are substantively identical;
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`they contain the same grounds (based on the same prior art
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`combinations and supporting evidence) against the same claims and
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`rely on the same evidence, including a substantively identical expert
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`declaration, consistent with PTAB joinder practice.
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`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
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`inter partes review petition with another inter partes review proceeding. See 35
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`U.S.C. § 315(c). The Board, in determining whether to exercise its discretion to
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`grant joinder, considers whether the joinder motion: (1) sets forth the reasons why
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`joinder is appropriate; (2) identifies any new grounds of unpatentability asserted in
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`LGE’s Motion for Joinder
`Inter Partes Review of US 7,292,835
`the petition; (3) explains what impact (if any) joinder would have on the trial
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`schedule for the existing review; and (4) addresses specifically how briefing and
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`discovery may be simplified. Dell, Inc. v. Network-1 Security Solutions, Inc.,
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`IPR2013-00385, Paper No. 17 at 4 (PTAB July 29, 2013).
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`B.
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`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
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`Petition is substantively identical to the TCL Petition. LGE does not present any
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`new grounds of unpatentability, consistent with PTAB
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`joinder practice.
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`Additionally, as all substantive issues are identical and LGE will act as an
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`“understudy,” joinder should have no impact on the pending schedule of the TCL
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`IPR. See Sony Corporation v. Memory Integrity, LLC., IPR2015-01353, Paper No.
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`11 at 6 (Oct. 5, 2015) (granting motion for joinder where petitioners requested an
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`“understudy” role); see also Samsung Electronics America, Inc. v. Uniloc 2017 LLC,
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`IPR2018-01383, Paper No. 9 at 4-5 (Nov. 19, 2018) (granting motion for joinder).
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`Moreover, the briefing and discovery will be simplified by resolving all issues in a
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`single proceeding. Accordingly, joinder is appropriate.
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`1.
`Joinder With The TCL IPR Is Appropriate
`The Board “routinely grants motions for joinder where the party seeking
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`joinder introduces identical arguments and the same grounds raised in the existing
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`proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper No.
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`4
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`LGE’s Motion for Joinder
`Inter Partes Review of US 7,292,835
`12 at 9 (Aug. 24, 2016) (emphasis in original) (internal quotations and citations
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`omitted). Here, joinder with the TCL IPR is appropriate because the LGE Petition
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`submits identical arguments and the same grounds introduced in the existing TCL
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`IPR, consistent with PTAB joinder practice. More specifically, the LGE Petition
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`copies verbatim the challenges set forth in the TCL Petition and relies on a
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`substantially identical expert declaration. The only differences between the LGE
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`Petition and the TCL Petition relate to formalities of a different party filing the
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`petition; there are no other changes to the facts, citations, evidence, or invalidity
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`arguments introduced in the TCL Petition. While the LGE Petition relies on a
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`declaration from a different expert witness, LGE’s expert reviewed and agreed with
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`the expert declaration supporting the TCL IPR, and LGE’s expert declaration is
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`substantively identical to the TCL Petitioners’ expert declaration and does not
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`include any new or additional opinions. See Everlight Elecs. Co., v. Document
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`Security Sys., Inc., IPR2018-01260, Paper No. 12 at 6-7 (Nov. 14, 2018) (granting
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`motion for joinder where petitioner submitted separate but substantially identical
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`expert declaration). Moreover, assuming that the TCL Petitioners do not terminate
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`their IPR before their expert is deposed, LGE will waive its expert declaration and
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`agree to be bound by the declaration(s) and deposition(s) of the TCL Petitioners’
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`expert. Because these proceedings are virtually identical, good cause exists for
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`joining this proceeding with the TCL IPR so that the Board, consistent with 37
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`LGE’s Motion for Joinder
`Inter Partes Review of US 7,292,835
`C.F.R. § 42.1(b), can efficiently “secure the just, speedy, and inexpensive
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`resolution” of the LGE Petition and the TCL Petition in a single proceeding.
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`Moreover, granting joinder will not prejudice Patent Owner or the current
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`petitioners, TCL and Hisense. As discussed above, the LGE Petition does not raise
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`any new ground that is not raised in the TCL Petition, consistent with PTAB joinder
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`practice. Therefore, there should be little or no additional cost to Patent Owner or
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`TCL or Hisense due to LGE’s joinder.
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`2.
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`Petitioner Does Not Propose New Grounds of
`Unpatentability
`As discussed above, the LGE Petition does not assert any new grounds of
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`patentability consistent with PTAB joinder practice. It challenges the same claims
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`of the ’835 Patent based on the same arguments, evidence, and grounds of
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`unpatentability as the TCL IPR consistent with PTAB joinder practice. See Sony,
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`IPR2015-01353, Paper No. 11 at 6 (granting institution of IPR and motion for
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`joinder where petitioners relied “on the same prior art, same arguments, and same
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`evidence, including the same expert and a substantively identical declaration”);
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`Everlight, IPR2018-01260, Paper No. 12 at 6-7 (granting motion for joinder where
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`petitioner “asserts the same unpatentability grounds” and “relies on the same prior
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`art analysis [even] though it relies on a different expert”); see also Par Pharm., Inc.
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`v. Novartis AG, IPR2016-01023, Paper No. 20 at 14 (Oct. 27, 2016) (granting motion
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`for joinder where petitioners “do not assert any new ground of unpatentability that
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`LGE’s Motion for Joinder
`Inter Partes Review of US 7,292,835
`is not already being considered in [an instituted IPR proceeding], rely on the same
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`arguments and evidence, and do not require any modification to the existing
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`schedule”).
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`3.
`No Impact on the TCL IPR Trial Schedule
`Joinder should have no impact on the TCL IPR trial schedule because the LGE
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`Petition presents no new issues or grounds of unpatentability, consistent with PTAB
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`joinder practice. See Sony, IPR2015-01353, Paper No. 11 at 6 (granting IPR and
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`motion for joinder where “joinder should not necessitate any additional briefing or
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`discovery from Patent Owner beyond that already required in [the original IPR]”).
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`There are no new issues for the Board to address, and Patent Owner will not be
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`required to present any additional responses or arguments. Moreover, LGE will
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`adhere to all deadlines set by the Board’s Scheduling Order for the TCL IPR.
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`The Patent Owner’s Response will not be impacted because the issues
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`presented in the LGE Petition are identical to the issues presented in the TCL
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`Petition. Patent Owner will not be required to provide any additional analysis or
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`arguments beyond what it will already provide in responding to the TCL Petition.
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`Additionally, no additional expert discovery will be needed. While the TCL
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`Petition relies on a declaration from a different expert witness, LGE’s expert has
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`reviewed and agreed with the expert declaration supporting the TCL IPR, and LGE’s
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`expert declaration is substantively identical to the TCL Petitioners’ expert
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`LGE’s Motion for Joinder
`Inter Partes Review of US 7,292,835
`declaration. Assuming the TCL Petitioners’ do not terminate their IPR before their
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`expert is deposed, LGE agrees to rely entirely on, and be bound by, the expert
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`declaration(s) and deposition(s) in the TCL IPR, and LGE will waive its own expert
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`declaration. Accordingly, if the TCL Petitioners do not terminate their IPR
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`prematurely, there will be no need for any deposition of LGE’s expert.
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`Accordingly, joinder of LGE to the TCL IPR will not affect the Board’s ability
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`to complete its review and final decision within the statutory time limits under 35
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`U.S.C. § 316(a)(11) and 37 C.F.R. § 42.100(c).
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`4.
`Briefing and Discovery Will Be Simplified
`LGE agrees to a complete and silent “understudy” role and will not raise any
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`issues. Specifically, LGE agrees that, if joined, the following conditions shall apply
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`so long as TCL and Hisense remain active parties. These conditions are less
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`burdensome on the Patent Owner and lead petitioner than conditions that have been
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`previously approved by the Board in similar circumstances:
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`a)
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`All substantive filings will be consolidated, for which the TCL
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`Petitioners will maintain responsibility (i.e., LGE will rely on the
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`filings of the TCL Petitioners ), unless a filing solely concerns issues
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`that do not involve the TCL Petitioners (e.g., Mandatory Notices);
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`b)
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`LGE shall rely on the grounds instituted by the Board in the TCL IPR,
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`and the arguments and discovery introduced by the TCL Petitioners;
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`LGE’s Motion for Joinder
`Inter Partes Review of US 7,292,835
`LGE shall not be permitted to raise any new grounds not already
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`instituted by the Board in the TCL IPR, or introduce any argument or
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`discovery not already introduced by the TCL Petitioners;
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`c)
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`LGE shall be bound by any agreement between Patent Owner and the
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`TCL Petitioners concerning discovery and/or depositions; and
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`d)
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`LGE at deposition shall not request any direct, cross examination or
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`redirect time beyond that permitted for the TCL Petitioners alone
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`under either 37 C.F.R. § 42.53 or any agreement between Patent
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`Owner and the TCL Petitioners. See Mylan Pharms. Inc. v. Novartis
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`AG, IPR2015-00268, Paper 17 at 5-6 (Apr. 10, 2015) (finding the
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`same proposed limitations “are consistent with the ‘understudy’ role
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`that Petitioner agrees to assume, as well as Petitioner’s assertion that
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`its presence would not require introducing any additional arguments,
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`briefing, or discovery.”).
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`e)
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`LGE agrees to be bound by the expert deposition and declarations of
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`the TCL Petitioners’ expert and LGE will waive its own expert
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`declaration, unless the TCL Petitioners cease to be active participants
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`in their IPR prior to their expert’s deposition.
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`LGE’s Motion for Joinder
`Inter Partes Review of US 7,292,835
`In short, LGE agrees to participate in the joined proceedings as an
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`“understudy” and would assume an active role only if the TCL Petitioners are
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`dismissed from the joined proceedings or elect to transfer control to LGE.
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`Thus, by LGE accepting an “understudy” role, Patent Owner and the TCL
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`Petitioners can comply with the existing trial schedule without needing any
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`duplicative efforts by the Board or the Patent Owner. These steps will minimize any
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`potential complications or delay that potentially may result by joinder. See Sony,
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`IPR2015-01353, Paper No. 11 at 6-7 (granting IPR and motion for joinder because
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`“joinder would increase efficiency by eliminating duplicative filings and discovery,
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`and would reduce costs and burdens on the parties as well as the Board” where
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`petitioners agreed to an “understudy” role). LGE is further willing to agree to any
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`other reasonable conditions the Board deems necessary.
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`IV. CONCLUSION
`For the foregoing reasons, LGE respectfully requests that the Board grant its
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`Petition for Inter Partes Review of the ’835 Patent and that the proceedings be joined
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`with IPR2021-00985.
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`10
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`Dated: December 17, 2021
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`LGE’s Motion for Joinder
`Inter Partes Review of US 7,292,835
`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
`
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`11
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`LGE’s Motion for Joinder
`Inter Partes Review of US 7,292,835
`CERTIFICATE OF SERVICE
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`The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e) and
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`42.105(b) on the Patent Owner by FedEx of a copy of this Motion for Joinder at the
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`correspondence address of record for the ’835 patent:
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`Rick D. Nydegger
`rnydegger@wnlaw.com
`Workman Nydegger
`60 East South Temple, Suite 1000
`Salt Lake City, UT 84111
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`
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`Courtesy copies of the same documents were also served at the following
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`email addresses of record for ParkerVision’s litigation counsel for the subject patent
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`in the district court litigation at the U.S. District Court for the Western District of
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`Texas, Case No. 6-21-cv-00520:
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`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
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`
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`Dated: December 17, 2021
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`
`
`/Scott A. McKeown/
`Scott A. McKeown
`ROPES & GRAY LLP
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`