Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Entered: July 20, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`v.
`GESTURE TECHNOLOGY PARTNERS, LLC,
`Patent Owner.
`
`IPR2022-00362
`Patent 8,878,949 B2
`
`
`
`
`
`
`
`
`
`Before PATRICK R. SCANLON, GREGG I. ANDERSON, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`SCANLON, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 7
`Entered: July 20, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`v.
`GESTURE TECHNOLOGY PARTNERS, LLC,
`Patent Owner.
`
`IPR2022-00362
`Patent 8,878,949 B2
`
`
`
`
`
`
`
`
`
`Before PATRICK R. SCANLON, GREGG I. ANDERSON, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`SCANLON, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`
`
`
`IPR2022-00362
`Patent 8,878,949 B2
`
`I.
`INTRODUCTION
`Google LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`an inter partes review of claims 1–18 of U.S. Patent No. 8,878,949 B2
`(Ex. 1001, “the ’949 patent”). Concurrently with the Petition, Petitioner also
`filed a Motion for Joinder with Apple Inc. v. Gesture Technology Partners,
`LLC, Case IPR2021-00921 (the “Apple IPR”).1 Paper 3 (“Mot.”). Petitioner
`represents that the petitioner in the Apple IPR—Apple Inc.—does not
`oppose the Motion for Joinder. Mot. 1. Gesture Technology Partners, LLC
`(“Patent Owner”) did not file a response or an opposition to the Motion.
`Applying the standard set forth in 35 U.S.C. § 314(a), which requires
`demonstration of a reasonable likelihood that Petitioner would prevail with
`respect to at least one challenged claim, we institute an inter partes review.2
`Further, for the reasons set forth below, we grant the Motion for Joinder.
`II. BACKGROUND
`A. Real Parties in Interest
`Petitioner identifies itself as the real party in interest. Pet. 61. Patent
`Owner identifies itself as the real party in interest. Paper 4, 1.
`B. Related Matters
`The parties identify the following proceedings as related matters
`involving the ’949 patent: Gesture Technology Partners, LLC v. Apple Inc.,
`No. 6:21-cv-00121 (W.D. Tex.); Gesture Technology Partners, LLC v.
`Lenovo Group Ltd., No. 6:21-cv-00122 (W.D. Tex.); Gesture Technology
`
`
`1 Since the filing of Petitioner’s Motion, IPR2022-00092 (LG Electronics,
`Inc. and LG Electronics U.S.A., Inc.) has been joined with this proceeding.
`See Apple IPR, Paper 12.
`2 Our findings and conclusions at this stage are preliminary, and thus, no
`final determinations are made.
`
`2
`
`
`
`IPR2022-00362
`Patent 8,878,949 B2
`Partners, LLC v. LG Electronics, Inc., No. 6:21-cv-00123 (W.D. Tex.);
`Gesture Technology Partners, LLC v. Huawei Device Co., Ltd., No. 2:21-cv-
`00040 (E.D. Tex.); and Gesture Technology Partners, LLC v. Samsung
`Electronics Co., Ltd., No. 2:21-cv-00041 (E.D. Tex.). Pet. 61; Paper 4, 1.
`In addition, Patent Owner identifies the following inter partes review
`proceedings as related matters: IPR2021-00917; IPR2021-00920; IPR2021-
`00921; IPR2021-00922; IPR2021-00923; IPR2021-01255; IPR2022-00090;
`IPR2022-00091; IPR2022-00092; IPR2022-00093; IPR2022-00359;
`IPR2022-00360; and IPR2022-00361. Paper 4, 1–3. Patent Owner also
`identifies these related Ex Parte Reexaminations: No. 90/014,900;
`No. 90/014,901; No. 90/014,902; and No. 90/014,903. Id. at 3.
`In the Apple IPR, the Board instituted an inter partes review of claims
`1–18 of the ’949 patent on the following grounds:3
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1–18
`103(a)
`Numazaki,4 Nonaka5
`6, 12, 17
`103(a)
`Numazaki, Nonaka, Aviv6
`See Apple IPR, Paper 8 (PTAB Dec. 13, 2021) (“Apple Dec.”).
`III. INSTITUTION OF INTER PARTES REVIEW
`The Petition in this proceeding asserts the same grounds of
`unpatentability as the ones on which we instituted review in the Apple IPR.
`Compare Pet. 6, 10–53, with Apple Dec. 5. Indeed, Petitioner contends that
`
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’949 patent has an
`effective filing date before the March 16, 2013, effective date of the
`applicable AIA amendments, we apply the pre-AIA version of 35 U.S.C.
`§ 103.
`4 US 6,144,366, issued Nov. 7, 2000 (Ex. 1004).
`5 JP H4-73631, published Mar. 9, 1992 (Ex. 1005).
`6 US 5,666,157, issued Sept. 9, 1997 (Ex. 1006).
`
`3
`
`
`
`IPR2022-00362
`Patent 8,878,949 B2
`the “[P]etition and the Apple IPR are substantively identical; they contain
`the same grounds (based on the same prior-art combinations and supporting
`evidence) against the same claims.” Mot. 1; see also id. at 5–6. This
`includes relying on the same expert declaration as the Apple IPR. Id. at 5.
`Patent Owner did not file a Preliminary Response.
`For the same reasons set forth in our institution decision in the Apple
`IPR, we determine that Petitioner has shown a reasonable likelihood that it
`will prevail with respect to at least one of the claims challenged in the
`Petition. We therefore institute trial as to all challenged claims on all
`grounds stated in the Petition.
`IV. MOTION FOR JOINDER
`The statutory provision governing joinder in inter partes review
`proceedings (35 U.S.C. § 315(c)) reads:
`If the Director institutes an inter partes review, the Director, in
`his or her discretion, may join as a party to that inter partes
`review any person who properly files a petition under section
`311 that the Director, after receiving a preliminary response
`under section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter partes
`review under section 314.
`As the moving party, Petitioner bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`should: set forth the reasons joinder is appropriate; identify any new grounds
`of unpatentability asserted in the petition; and explain what impact (if any)
`joinder would have on the trial schedule for the existing review. See
`Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr.
`24, 2013).
`Petitioner timely filed the Motion no later than one month after
`institution of the Apple IPR. See 37 C.F.R. § 42.122 (b). As noted, the
`
`4
`
`
`
`IPR2022-00362
`Patent 8,878,949 B2
`Petition in this case asserts the same unpatentability grounds on which we
`instituted review in the Apple IPR. See Mot. 1. Petitioner also relies on the
`same prior art analysis and expert testimony submitted by Apple in the
`Apple IPR. See id. at 5. Indeed, the Petition is nearly identical to the
`petition filed by Apple in the Apple IPR. See id. Thus, this inter partes
`review does not present any ground or matter not already at issue in the
`Apple IPR. Id.
`If joinder is granted, Petitioner agrees to assume an “‘understudy’
`role” and agrees that this role “shall apply so long as the current petitioner in
`IPR2021-00921 remains an active party.” 7 Id. at 7. Petitioner further
`represents that it will not advance any arguments separate from those
`advanced by Apple in the consolidated filings. Id. Because Petitioner
`expects to participate only in a limited capacity, Petitioner submits that
`joinder will not impact the trial schedule for the Apple IPR. Id. at 6.
`Patent Owner did not file an Opposition to the Motion for Joinder.
`Based on the above, we determine that joinder with the Apple IPR is
`appropriate under the circumstances. Accordingly, we grant Petitioner’s
`Motion for Joinder.
`
`V. ORDER
`In consideration of the foregoing, it is hereby:
`
`
`7 As noted previously, Apple Inc. was the initial Petitioner in IPR2021-
`00921, however, since the filing of Google’s Motion, IPR2022-00092 (LG
`Electronics, Inc. and LG Electronics U.S.A., Inc.) has been joined with this
`proceeding. See Apple IPR, Paper 12. LG Electronics, Inc. and LG
`Electronics U.S.A., Inc. have also agreed to take an understudy role to Apple
`Inc. See id. at 10. Thus, Google LLC will assume an “understudy role”
`unless and until Apple Inc., LG Electronics, Inc., and LG Electronics
`U.S.A., Inc. are no longer parties to the inter partes review.
`
`5
`
`
`
`IPR2022-00362
`Patent 8,878,949 B2
`ORDERED that an inter partes review of claims 1–18 of the ’949
`patent is instituted with respect to all grounds set forth in the Petition;
`FURTHER ORDERED that the Motion for Joinder with IPR2021-
`00921 is granted;
`FURTHER ORDERED that IPR2022-00362 is joined with IPR2021-
`00921, pursuant to 37 C.F.R. § 42.122, wherein Petitioner will maintain a
`secondary role in the proceeding, unless and until the current IPR2021-
`00921 petitioners cease to participate as a petitioner in the inter partes
`review;
`FURTHER ORDERED that the Scheduling Order in place for
`IPR2021-00921 (Paper 9) remains unchanged, and shall govern the joined
`proceeding;
`FURTHER ORDERED that all future filings in the joined proceeding
`are to be made only in IPR2021-00921;
`FURTHER ORDERED that the case caption in IPR2021-00921 shall
`be changed to reflect joinder of Google LLC as a petitioner in accordance
`with the below example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2021-00921.
`
`
`
`
`
`
`6
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`IPR2022-00362
`Patent 8,878,949 B2
`
`
`Example Caption
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`APPLE, INC., LG ELECTRONICS, INC.,
`LG ELECTRONICS U.S.A., INC., and GOOGLE LLC,
`Petitioner,
`v.
`GESTURE TECHNOLOGY PARTNERS, LLC,
`Patent Owner.
`_______________
`
`IPR2021-009218
`Patent 8,878,949 B2
`_______________
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`8 IPR2022-00092 (LG Electronics, Inc. and LG Electronics U.S.A., Inc.) and
`IPR2022-00362 (Google LLC) have been joined with this proceeding.
`
`7
`
`
`
`IPR2022-00362
`Patent 8,878,949 B2
`For PETITIONER:
`
`Erika Arner
`Daniel Cooley
`Mingji Jin
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`erika.arner@finnegan.com
`daniel.cooley@finnegan.com
`mingji.jin@finnegan.com
`
`
`For PATENT OWNER:
`
`Todd Landis
`John Wittenzellner
`WILLIAMS SIMONS & LANDIS PLLC
`tlandis@wsltrial.com
`johnw@wsltrial.com
`
`
`8
`
`
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