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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________________
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`LG ELECTRONICS INC.,
`LG ELECTRONICS U.S.A., INC., and GOOGLE LLC
`Petitioners
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`v .
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`SPACETIME3D, INC.
`Patent Owner
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`Case No. IPR2023-00577
`U.S. Patent No. 8,881,048
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`MOTION FOR JOINDER TO INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b))
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), LG Electronics,
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`Inc., LG Electronics U.S.A., Inc., (collectively, “LG”) and Google LLC (together
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`collectively, “Petitioner”) move for joinder with the Inter Partes Review of U.S.
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`Patent No. 8,881,048 (“the ’048 patent”), Apple Inc. vs. SpaceTime3D Inc., IPR2023-
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`00242 (“the Apple IPR”), for which the petition for Inter Partes Review was filed
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`on November 22, 2022, and is currently pending. IPR2023-00242, paper 1.
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`Petitioner requests that action on this motion be held in abeyance until, and only if,
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`the Apple IPR is instituted. 1 This motion is timely because it is filed before
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`institution of the Apple IPR, i.e., “no later than one month after the institution date”
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`of the Apple IPR. 37 C.F.R. § 42.122(b); Central Security Group – Nationwide, Inc.
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`v. Ubiquitous Connectivity, LP, IPR2019-01609, Paper 11, at 8-9 (P.T.A.B. Feb. 26,
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`2020) (stating that § 42.122(b) is “[t]he only timing requirement for a motion for
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`joinder”). Petitioner understands that the petitioner in the Apple IPR (“Apple”) does
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`not oppose Petitioner’s request for joinder.
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`1 Should the Board deny institution of the Apple IPR, this Motion should be
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`considered moot and Petitioner respectfully requests that the Board consider this
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`petition independently of the Apple IPR.
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`-1-
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`Petitioner requests institution of this Petition for Inter Partes Review. This
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`Petition is substantively identical to the original Apple IPR petition in all material
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`respects. The only substantive changes are in the Introduction to identify the correct
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`Petitioner, in the discussion of the Fintiv factors to accurately describe the
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`procedural history of the underlying litigation between LG and Patent Owner, and
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`in mandatory notices under 37 C.F.R. § 42.8(b). The Petition here and the Apple
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`IPR petition challenge the same claims of the ’048 patent on the same grounds
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`relying on the same prior art and evidence, including the same declaration identical
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`in substance from the same expert.
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`Thus, the Petition warrants institution under 35 U.S.C. § 314, and 35 U.S.C.
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`§ 315(c) permits Petitioner’s joinder to the Apple IPR.
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`Further, if joined, Petitioner agrees to adhere to all applicable deadlines in the
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`Apple IPR and coordinate all filings with Apple in the Apple IPR. Apple will
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`maintain the lead role in the proceedings so long as it is a party to the proceedings
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`and is not estopped under § 315(e)(1), and Petitioner here will assume an understudy
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`role. Petitioner will only assume the lead role in the proceedings if Apple is no
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`longer a party to the proceedings or unable to advance arguments for one or more
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`claims, or grounds, for example, because of § 315(e)(1). Petitioner agrees to
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`consolidated filings for all substantive papers in the proceeding. Apple and
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`Petitioner will be jointly responsible for the consolidated filings. Absent a Board
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`order precluding Apple from making arguments that would otherwise be available
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`to Petitioner, Petitioner will not advance any arguments separate from those
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`advanced by Apple in the consolidated filings. These limitations will avoid lengthy
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`and duplicative briefing. Also, Petitioner will not seek additional depositions or
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`deposition
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`time, and will coordinate deposition questioning and hearing
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`presentations with Apple. Petitioner agrees to the foregoing conditions even in the
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`event that other IPRs filed by other, third-party petitioners are joined with the Apple
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`IPR.
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`Joinder will help efficiently resolve the disputes among the parties. By
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`joinder, a single Board decision may dispose of the issues raised in the Apple IPR
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`for all interested parties. Further, the Patent Owner has asserted the ’048 patent in
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`district court against LG. Joinder will estop LG from asserting in district court those
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`issues resolved in a final decision from the Apple IPR, thus narrowing the issues in
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`the district court. See 35 U.S.C. § 315(e)(2). Finally, joinder would not complicate
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`or delay the Apple IPR and would not adversely affect any schedule set in that
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`proceeding. In sum, joinder would promote efficient adjudication in multiple
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`forums. On the other hand, if instituted, maintaining the Petitioner’s IPR proceeding
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`separate from that of the Apple IPR would entail needless duplication of effort.
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`Joinder will not unduly prejudice any party. Because joinder will not add any
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`new substantive issues, delay the schedule, burden deponents, or increase needless
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`filings, any additional costs on the Patent Owner would be minimal. On the other
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`hand, denial of joinder would prejudice Petitioner. Their interests may not be
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`adequately protected in the Apple IPR proceedings, particularly if Apple settles with
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`the Patent Owner. Petitioner should be allowed to join in a proceeding affecting a
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`patent asserted against them.
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`II. BACKGROUND AND RELATED PROCEEDINGS
`SpaceTime3D, Inc. (the “Patent Owner”) is the owner of the ’048 patent.
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`SpaceTime3D, Inc. has asserted the ’048 patent against LG Electronics Inc. and LG
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`Electronics U.S.A., Inc. in SpaceTime3D, Inc. v. LG Electronics, Inc. et al., No.
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`2:22-cv-00049 (E.D. Tex.). On November 22, 2022, Apple filed its IPR petition,
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`IPR2023-00242, against the ’048 patent. Petitioner here timely moves for joinder
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`with the Apple IPR.
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`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
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`proceeding. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); see also Dell Inc. v.
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`Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 19, at 4-6; Sony Corp. v.
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`Yissum Res. & Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013-00326, Paper
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`15, at 3-4; Motorola Mobility LLC v. Proxyconn, Inc., IPR2013-00109, Paper 15, at
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`3-4. “The Board will determine whether to grant joinder on a case-by-case basis,
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`taking into account the particular facts of each case, substantive and procedural
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`issues, and other considerations.” Dell, IPR2013-00385, Paper 19, at 3. The
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`movants bear the burden of proof in establishing entitlement to the requested relief.
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`37 C.F.R. §§ 42.20(c), 42.122(b). A motion for joinder should:
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`(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.
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`Dell, IPR2013-00385, Paper 19, at 4.
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`B.
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`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
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`are at issue in the Apple IPR. For simplicity and efficiency, Petitioner has
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`substantially copied the substance of Apple’s petition and accompanying
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`declaration. Petitioner does not seek to introduce grounds or claims not in the Apple
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`IPR and seeks only to join the proceeding as instituted. Petitioner is relying on the
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`expert declaration submitted in the Apple IPR. The Patent Owner should not require
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`any discovery beyond that which it may need in the Apple IPR—nor should the
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`-5-
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`Board permit any. The Petition presents no new substantive issues relative to the
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`Apple IPR and does not seek to broaden the scope of the Apple IPR.
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`For efficiency’s sake, Petitioner will:
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`1. Adhere to all applicable deadlines in the Apple IPR;
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`2. Submit “consolidated” filings with the Apple, as set forth above in the
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`statement of precise relief requested;
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`3. Refrain from requesting or reserving any additional depositions or
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`deposition time;
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`4. Refrain from requesting or reserving additional oral hearing time; and
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`5. Assume a second-chair role as long as Apple remains in the
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`proceeding.2
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`In view of these provisions, joinder should not affect the trial schedule.
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`2 These limitations are consistent with previously granted joinder motions. See, e.g.,
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`Enzymotech Ltd. v. Neptune Techs., IPR2014-00556, Paper 19 (July 9, 2014)
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`(agreeing to procedural concessions, such as “consolidated” responses); Gillette Co.
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`v. Zond, IPR2014-01016, Paper 13 (Nov. 10, 2014) (same); SAP Am. Inc. v.
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`Clouding IP, LLC, IPR2014-00306, Paper 13 (May 19, 2014) (same).
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`C.
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`Joinder will promote efficiency by consolidating issues, avoiding
`wasteful duplication, and preventing inconsistency.
`Petitioner presents substantially identical arguments and supporting evidence
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`as the Apple IPR. Joinder will simplify briefing and discovery. Given that the Apple
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`IPR and the Petition address the same prior art and grounds for rejection of the same
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`claims, joining these proceedings allows for joint submissions and discovery, further
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`streamlining the proceedings. This should promote efficiency and conserve the
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`Board’s and the parties’ resources. Further, joinder will estop Petitioner from
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`asserting in district court those issues resolved in a final written decision in the Apple
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`IPR, thus narrowing the issues in the district court actions. See 35 U.S.C.
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`§ 315(e)(2).
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`D.
`Joinder is Appropriate
`The Board has previously stated that it is “mindful of a policy preference for
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`joining a party that does not present new issues.” Enzymotec Ltd. v. Neptune Techs
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`& Bioresources, Inc. IPR2014-00556, Paper No. 19 at 6 (July 9, 2014) (citing 157
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`CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office
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`anticipates that joinder will be allowed as of right – if an inter partes review is
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`instituted on the basis of a petition, for example, a party that files an identical petition
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`will be joined to that proceeding, and thus allowed to file its own briefs and make
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`its own arguments.”)).
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`Here, because Petitioner seeks institution on the grounds, evidence, and
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`arguments advanced, or that will be advanced, in the Apple IPR, institution is
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`warranted under 35 U.S.C. § 314 and Petitioner’s joinder to the Apple IPR is
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`appropriate under 35 U.S.C. § 315(c). No new grounds of unpatentability are
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`asserted. As explained above, joinder would not adversely impact the trial schedule,
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`briefing, or discovery in the Apple IPR, and the remaining equities compel joinder.
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`Petitioner is filing this Petition and joinder motion to ensure that the trial is
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`completed in the event that Apple reaches settlement with Patent Owner.
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`1. Without joinder, Petitioner will be prejudiced
`A denial of joinder would prejudice Petitioner. The substantial interests of
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`LG, as parties against whom the ’048 patent has been asserted in federal district
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`court actions, may not be adequately protected by Apple in the Apple IPR
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`proceedings. For example, Petitioner has an interest that the Apple IPR reaches a
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`final determination to facilitate a timely and cost-effective end to the controversy
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`between LG and the Patent Owner. Petitioner should be allowed to join in a
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`proceeding affecting a patent asserted against at least one Petitioner.
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`2.
`Joinder will not unduly prejudice any party
`The Petition raises issues already before the Board and long known to the
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`Patent Owner. Addressing patent validity in this proceeding serves the parties’ and
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`Board’s interests.
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`-8-
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`IV. CONCLUSION
`Joinder will not affect the substance, procedure, or scheduling of the Apple
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`IPR. Petitioner files this motion under the statutory joinder provisions as
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`contemplated by the AIA. Joinder will simplify the issues and promote efficiency,
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`justice, and speed.
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`For the foregoing reasons, Petitioner respectfully requests inter partes review
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`of U.S. Patent No. 8,881,048 and joinder with Apple Inc. vs. SpaceTime3D Inc.,
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`IPR2023-00242.
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`-9-
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`Dated: February 10, 2023
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`Respectfully submitted,
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`By:/ Matthew D. Satchwell /
`Reg. No. 58,870
`DLA Piper LLP (US)
`444 W Lake St. #900
`Chicago, IL 60606
`matthew.satchwell@dlapiper.com
`Phone: 312-368-2111
`Fax: 312-731-4403
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`Brent Yamashita
`Reg. No. 53,808
`DLA Piper LLP (US)
`2000 University Ave
`East Palo Alto, CA 94303
`brent.yamashita@dlapiper.com
`Phone: 650-833-2348
`Fax: 650-687-1206
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`Christopher Duerden
`Reg. No. 77,464
`DLA Piper LLP (US)
`33 Arch St #26
`Boston, MA 02110
`chris.duerden@dlapiper.com
`Phone: 617-406-6077
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`Attorneys for Petitioners
`LG Electronics Inc. and LG Electronics
`U.S.A., Inc.
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`Erika H. Arner
`Reg. No. 57,540
`Finnegan, Henderson, Farabow, Garrett,
`& Dunner LLP
`1875 Explorer Street, Suite 800
`Reston, VA 20190-6023
`-10-
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`erika.arner@finnegan.com
`Phone: 571-203-2700
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`Cory C. Bell
`Reg. No. 75,096
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`2 Seaport Lane, 6th Floor
`Boston, MA 02210-2001
`cory.bell@finnegan.com
`Phone: 617-646-1600
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`Yanyi Liu
`Reg. No. 71,046
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`Stanford Research Park
`3300 Hillview Avenue
`Palo Alto, CA 94304-1203
`yanyi.liu@finnegan.com
`Phone: 650-849-6600
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`Yinan Liu
`Reg. No. 72,482
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`2 Seaport Lane, 6th Floor
`Boston, MA 02210-2001
`yinan.liu@finnegan.com
`Phone: 617-646-1600
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`Attorneys for Petitioner
`Google LLC
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`-11-
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned hereby
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`certifies that a copy of the foregoing Motion for Joinder was provided to Patent
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`Owner electronically, by agreement (see EX1055), by emailing a copy of the same
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`to the following attorneys for Patent Owner:
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`Meng Xi (mxi@susmangodfrey.com)
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`Max L. Tribble (mtribble@susmangodfrey.com)
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`Matthew R. Berry (mberry@susmangodfrey.com)
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`Gloria Park (gpark@susmangodfrey.com)
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`Floyd G. Short (fshort@susmangodfrey.com)
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`Adam Tisdall (atisdall@susmangodfrey.com)
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`In addition, a copy of this Motion for Joinder and supporting material is being
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`electronically served in its entirety on counsel for Petitioner in related Case No.
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`IPR2023-00242.
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`W. Karl Renner (renner@fr.com)
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`Andrew B. Patrick (patrick@fr.com)
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`Kenneth Wayne Darby, Jr. (kdarby@fr.com)
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`Usman A. Khan (khan@fr.com)
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`Dated: February 10, 2023
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`Respectfully submitted,
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`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
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