Paper No. __
`Filed: June 29, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`LG ELECTRONICS INC.,
`Petitioner,
`v.
`JAWBONE INNOVATIONS, LLC,
`Patent Owner.
`
`
`
`
`
`IPR2023-01134
`U.S. Patent No. 11,122,357
`
`
`
`
`
`MOTION FOR JOINDER TO AND CONSOLIDATION WITH
`RELATED INTER PARTES REVIEW IPR2023-00251
`PURSUANT TO 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`Filed: June 29, 2023
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`LG ELECTRONICS INC.,
`Petitioner,
`v.
`JAWBONE INNOVATIONS, LLC,
`Patent Owner.
`
`
`
`
`
`IPR2023-01134
`U.S. Patent No. 11,122,357
`
`
`
`
`
`MOTION FOR JOINDER TO AND CONSOLIDATION WITH
`RELATED INTER PARTES REVIEW IPR2023-00251
`PURSUANT TO 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`LG Electronics’ Motion for Joinder with
`Case IPR2023-00251
`
`Table of Contents
`INTRODUCTION ........................................................................................... 1
`
`STATEMENT OF FACTS .............................................................................. 2
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`I.
`
`II.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 2
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`A.
`
`B.
`
`C.
`
`Legal Standard ....................................................................................... 2
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`Petitioner’s Motion for Joinder Is Timely. ............................................ 3
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`The Board Should Permit Joinder ......................................................... 3
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`1.
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`2.
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`3.
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`Joinder Is Appropriate for Several Reasons. .............................. 4
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`Petitioner Proposes No New Grounds of Unpatentability. ......... 5
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`Joinder Will Not Unduly Burden or Negatively Impact the
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`Amazon IPR Trial Schedule. ...................................................... 5
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`4.
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`How Briefing and Discovery May Be Simplified ...................... 5
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`D. General Plastic Is Inapplicable ............................................................. 7
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`IV. CONCLUSION ................................................................................................ 9
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`-i-
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`LG Electronics’ Motion for Joinder with
`Case IPR2023-00251
`
`I.
`
`INTRODUCTION
`LG Electronics Inc. (“Petitioner”) respectfully submits this Motion for
`
`Joinder, together with a Petition for Inter Partes Review (“IPR”) of U.S. Patent No.
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`11,122,357 (“the ’357 Patent”) filed contemporaneously herewith. Pursuant to 35
`
`U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioner requests institution of this IPR,
`
`and joinder and consolidation with IPR2023-00251 (“the Amazon IPR”). That IPR
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`challenges the same claims and was instituted on June 1, 2023.
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`Joinder here would be consistent with the overarching policy of securing “the
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`just, speedy, and inexpensive resolution” of every IPR proceeding. 37 C.F.R.
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`§ 42.1(b). Petitioners’ Petition and the Amazon Petition are substantively
`
`identical— they contain the same grounds, based on the same prior art combinations
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`against the same claims. Thus, joinder would neither unduly complicate the Amazon
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`IPR nor delay its schedule.
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`To streamline discovery and briefing, Petitioner agrees to take an “under-
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`study” role, actively participating substantively in the Amazon IPR only if Amazon
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`terminates its involvement after joinder. (If Amazon were to terminate its
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`involvement prior to this motion being granted, then Petitioner would withdraw this
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`motion so that Petitioner’s timely-filed Petition could be considered on its merits.)
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`Because
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`joinder would promote
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`judicial efficiency
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`in determining
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`patentability without prejudicing Patent Owner, the Board should grant this motion.
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`-1-
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`LG Electronics’ Motion for Joinder with
`Case IPR2023-00251
`
`II.
`
`STATEMENT OF FACTS
`Patent Owner filed suit against Samsung on May 27, 2021, asserting seven
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`patents. (Case No. 2:21-cv-00186, E.D. Tex.) Patent Owner filed suits against Apple
`
`and Google on September 23, 2021, and has asserted nine patents against each of
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`them, including the seven patents also asserted against Samsung. (Case Nos. 6:21-
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`cv-00985, E.D. Tex., and 6:21-cv-00984, W.D. Tex.) Patent Owner filed suit against
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`Amazon on Nov. 29, 2021, and has asserted the same nine patents. (Case No.
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`2:21-cv-00435, E.D. Tex., transferred to Case No. 5:22-cv-06727, N.D. Cal.) Patent
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`Owner filed suit against Petitioner on February 28, 2023, asserting eight of the nine
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`patents it previously asserted against Apple, Google, and Amazon. Also on February
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`28, 2023, Patent Owner filed suit against Sony, HTC, OPPO, Panasonic, ZTE Corp.,
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`and Meta. Apple, Google, and Amazon have filed IPR Petitions against each of the
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`patents asserted against them.
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`For some of patents asserted against it, including the ’357 Patent, Petitioner is
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`filing substantively identical petitions to those previously filed and is seeking
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`joinder.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`A. Legal Standard
`The Board has the authority to join Petitioner as a party to the Amazon IPR.
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`35 U.S.C. § 315(c); see also 35 U.S.C. § 315(d) (Board also has the authority to
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`-2-
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`
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`LG Electronics’ Motion for Joinder with
`Case IPR2023-00251
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`consolidate proceedings). Whether a request for joinder should be granted is
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`discretionary. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4
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`(PTAB, April 24, 2013).
`
`B.
`Petitioner’s Motion for Joinder Is Timely.
`A petitioner may request joinder “no later than one month after the institution
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`date” of the original IPR. 37 C.F.R. § 42.122(b). This is the “only timing requirement
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`for a motion for joinder.” Central Security Group — Nationwide, Inc. v. Ubiquitous
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`Connectivity, LP, IPR2019-01609, Paper 11, at 8-9 (PTAB Feb. 26, 2020).
`
`This motion for joinder is timely. Amazon’s Petition was filed November 21,
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`2022, and IPR was instituted on June 1, 2023. Thus, Petitioner is filing its motion
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`for joinder within the time limit enumerated in 37 C.F.R. § 42.122(b).
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`C. The Board Should Permit Joinder
`In deciding whether to exercise its discretion and permit joinder, the Board
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`considers: (1) why joinder is appropriate; (2) whether the new petition presents any
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`new grounds of unpatentability; (3) any impact joinder would have on the trial
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`schedule for the existing review; and (4) how briefing and discovery may be
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`simplified. Kyocera Corp., IPR 2013-00004, Paper 15 at 4 (April 24, 2013). Here,
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`each of the four factors weighs in favor of joinder.
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`-3-
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`LG Electronics’ Motion for Joinder with
`Case IPR2023-00251
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`1.
`Joinder Is Appropriate for Several Reasons.
`Joinder is appropriate here because the concurrently filed Petition involves the
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`same patent, challenges the same claims, relies on the same substantive exhibits, and
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`is based on the same grounds and combinations of prior art submitted in the Amazon
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`IPR. The concurrently filed Petition is substantively identical to the Amazon
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`Petition, containing only minor differences relating to (a) the procedural formalities
`
`of having a different Petitioner file the Petition, and (b) changes to arguments
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`regarding discretionary denial under § 314(a) that result from a different co-pending
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`litigation. There are no changes to the facts, citations, evidence, or arguments
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`presented in the grounds for unpatentability set forth in the Amazon Petition.
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`Because the proceedings are substantively identical, good cause exists for joining
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`Petitioner as a party to the Amazon IPR and consolidating the proceedings, so that
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`the Board can efficiently resolve identical challenges in a single proceeding.
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`Central Security Group, IPR2019-01609, Paper 11 at 8; ZyXEL, IPR2021-00739,
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`Paper 17 at 20.
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`This efficiency gain extends to the litigation. In the Petition, Petitioner
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`stipulates that, if Petitioner’s Petition is instituted, then Petitioner will not pursue the
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`grounds identified in its Petition in the district court. Thus, joinder will ensure that
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`the grounds presented in the Amazon IPR are not inefficiently and unnecessarily
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`adjudicated in another forum (e.g., the district court litigation involving Petitioner).
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`-4-
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`
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`LG Electronics’ Motion for Joinder with
`Case IPR2023-00251
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`Because joinder will increase efficiency and reduce duplicative proceedings
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`involving the same patentability challenges, this factor favors joinder.
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`2.
`Petitioner Proposes No New Grounds of Unpatentability.
`The concurrently filed Petition presents the same grounds of unpatentability
`
`as the Amazon Petition and challenges the same claims. Therefore, Petitioners do
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`not propose any new grounds of unpatentability and this factor also favors joinder.
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`3.
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`Joinder Will Not Unduly Burden or Negatively Impact the
`Amazon IPR Trial Schedule.
`Because Petitioner’s Petition is substantively identical to the Amazon
`
`Petition—presenting the same grounds and challenging the same claims using the
`
`same evidence—there are no new issues for Patent Owner to address. Further,
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`joinder with the Amazon IPR will not unduly burden or negatively impact the
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`schedule in that proceeding in any way. Thus, this factor also favors joinder. Sony
`
`Corp. v. Memory Integrity, LLC, IPR2015-01353 Paper 11 at 6 (granting motion
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`where joinder does “not necessitate any additional briefing or discovery from Patent
`
`Owner beyond that already required [by the original IPR]”).
`
`4. How Briefing and Discovery May Be Simplified
`The concurrently filed Petition and the Amazon Petition present substantively
`
`identical grounds of unpatentability, including the same combinations of art against
`
`the same claims. Additionally, if this motion for joinder is granted, Petitioners agree
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`-5-
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`LG Electronics’ Motion for Joinder with
`Case IPR2023-00251
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`to take an “understudy” role, adhering to the following restrictions, as described by
`
`the Board:
`
`“(a) all filings by [Petitioner] in the joined proceeding be consolidated
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`with [Amazon’s], unless a filing solely concerns issues that do not
`
`involve [Amazon]; (b) [Petitioner] shall not be permitted to raise any
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`new grounds not already instituted by the Board in the [Amazon IPR],
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`or introduce any argument or discovery not already introduced by
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`[Amazon]; (c) [Petitioner] shall be bound by any agreement between
`
`[Patent Owner] and
`
`[Amazon] concerning discovery and/or
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`depositions; and (d) [Petitioner] at deposition shall not receive any
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`direct, cross-examination or redirect time beyond that permitted for
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`[Amazon] alone under either 37 C.F.R. § 42.53 or any agreement
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`between [Patent Owner] and [Amazon].”
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`Mylan Pharms. Inc. v. Novartis AG, IPR2015-00268, Paper 17 at 5 (PTAB April 10,
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`2015) (emphasis in original); see also Sony, IPR2015-01353, Paper 11 at 6 (granting
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`joinder where petitioners requested an “understudy” role). Petitioner will assume the
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`primary role only if Amazon ceases to participate in the Amazon IPR.
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`By joining Petitioner in the Amazon IPR and allowing Petitioner to take on
`
`an understudy role, both briefing and discovery will be simplified because Patent
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`Owner can maintain its current trial schedule and avoid duplicative efforts. The
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`-6-
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`LG Electronics’ Motion for Joinder with
`Case IPR2023-00251
`
`understudy role will minimize any potential complications or delay that potentially
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`could result by joinder, including duplicative discovery and filings. Sony, IPR2015-
`
`01353, Paper 11 at 6-7 (“[J]oinder would increase efficiency by eliminating
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`duplicative filings and discovery, and would reduce costs and burdens on the parties
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`as well as the board” where petitioners sought an “understudy” role). Thus, this
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`factor also favors joinder.
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`For these foregoing reasons, each of the factors that the Board considers in
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`evaluating potential joinder weighs in favor of granting this motion.
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`D. General Plastic Is Inapplicable
`The General Plastic analysis is inapplicable to this joinder motion
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`concurrently filed Petition. In General Plastic, the Board set forth factors for
`
`analyzing follow-on petitions. Generally, these factors are intended to help conserve
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`the Board’s resources and to prevent a subsequent petitioner from gaining a strategic
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`advantage from filing a later petition. General Plastic Indus. Co. v. Canon Kabushiki
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`Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017).
`
`Here, Petitioner is not filing a follow-on petition. Rather, Petitioner seeks to
`
`join the Amazon IPR as an understudy and does not present any new grounds. This
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`is not the type of serial petition necessitating a General Plastic analysis. Indeed, the
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`Board has found that the General Plastic factors are “not particularly relevant” in
`
`this situation, i.e., where a different petitioner files a “me-too” or “copycat” petition
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`-7-
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`
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`LG Electronics’ Motion for Joinder with
`Case IPR2023-00251
`
`with a timely motion for joinder. Central Security Group, IPR2019-01609, Paper 11
`
`at 8; Celltrion, Inc. v. Genentech, Inc., IPR2018-01019, Paper 11 at 9-11 (PTAB
`
`Oct. 30, 2018).
`
`Even if the Board were to consider the General Plastic factors, they would
`
`weigh in favor of institution. Petitioner has not previously filed a petition against the
`
`’357 Patent. Petitioner and the prior petitioners are not the same party and have no
`
`significant relationship. They are not co-defendants. They are competitors accused
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`of infringement—in different actions pending in different courts—based on sales of
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`different products. This weighs against denial. NetNut Ltd. v. Bright Data Ltd.,
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`IPR2021-00465, Paper 11, at 9 (PTAB Aug. 12, 2021) (declining to extend General
`
`Plastic to different petitioner with no relationship to previous petitioners);
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`Mercedes-Benz USA, LLC v. Carucel Invs. L.P., IPR2019-01404, Paper 12, at 11-12
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`(PTAB Jan. 22, 2020); Toshiba Am. Info. Sys., Inc. v. Walletex Microelecs. Ltd.,
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`IPR2018-01538, Paper 11, at 20 (PTAB Mar. 5, 2019).
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`The second through fifth factors relate to timing issues that are largely
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`irrelevant. When Petitioner learned of the prior art, whether Petitioner received
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`Patent Owner’s preliminary response or an institution decision, and the length of
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`time between the filing of the petitions, are all irrelevant. Petitioner did not
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`previously file any IPR petition, has substantively duplicated the Amazon Petition,
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`alleging the same facts, grounds, and prior art, and has agreed to take an understudy
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`-8-
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`LG Electronics’ Motion for Joinder with
`Case IPR2023-00251
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`role. As a result, this Petition cannot be considered an attempt to harass Patent Owner
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`or otherwise engage in serial, tactical filings. Indeed, the exact opposite is true.
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`Petitioner seeks to simplify and minimize the number of distinct proceedings by
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`joining the Amazon IPR rather than pursuing a separate IPR based on different
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`grounds.
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`The sixth factor considers the Board’s resources and the seventh factor relates
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`to the Board’s ability to meet the one-year statutory deadline. Allowing joinder here
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`would not impact the Board’s resources (beyond those dedicated to deciding this
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`motion), and would not impact the Board’s ability to meet the one-year statutory
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`deadline.
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`For the foregoing reasons, the General Plastic factors do not weigh against
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`institution and joinder of Petitioner to Amazon’s IPR.
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`IV. CONCLUSION
`Petitioner respectfully requests
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`that
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`the Board
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`institute Petitioner’s
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`concurrently filed IPR Petition, and then join Petitioner as a party to the Amazon
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`IPR.
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`-9-
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`LG Electronics’ Motion for Joinder with
`Case IPR2023-00251
`
`Respectfully submitted,
`WILLKIE FARR & GALLAGHER LLP
`
`Dated: June 29, 2023
`
` /Indranil Mukerji/
`Indranil Mukerji (Reg. No. 46,944)
`John C. Moulder (Reg. No. 70,490)
`
`
`
`Attorneys for Petitioner
`LG ELECTRONICS INC.
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`-10-
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`LG Electronics’ Motion for Joinder with
`Case IPR2023-00251
`
`CERTIFICATE OF SERVICE
`I hereby certify that true and correct copies of the foregoing MOTION FOR
`
`JOINDER TO AND CONSOLIDATION WITH RELATED INTER PARTES
`
`REVIEW IPR2023-00251 PURSUANT TO 35 U.S.C. § 315(c) AND 37 C.F.R.
`
`§ 42.122(b) is being served on June 29, 2023, via FedEx Priority Overnight on
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`counsel of record for U.S. Pat. 11,122,357 patent owner Jawbone Innovations, LLC
`
`at the address below:
`
`Mark Leonardo
`Nutter McClennen & Fish LLP
`Seaport West
`155 Seaport Blvd.
`Boston, MA 02210-2604
`A courtesy copy is also being served on counsel for the patent holder in the pending
`
`litigation Jawbone Innovations, LLC v. LG Electronics Inc., 2:23-cv-00078-JRG-
`
`RSP (E.D. Tex. filed February 28, 2023):
`
`
`Alfred R. Fabricant
`Peter Lambrianakos
`Vincent J. Rubino, III
`Richard M. Cowell
`Jacob D. Ostling
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`Email: ffabricant@fabricantllp.com
`Email: plambrianakos@fabricantllp.com
`
`-11-
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`
`
`LG Electronics’ Motion for Joinder with
`Case IPR2023-00251
`
`Email: vrubino@fabricantllp.com
`Email: jostling@fabricantllp.com
`Email: rcowell@fabricantllp.com
`Email: jawbone@fabricantllp.com
`WILLKIE FARR & GALLAGHER LLP
`
`Dated: June 29, 2023
`
` /Indranil Mukerji/
`Counsel for Petitioner,
`LG ELECTRONICS INC.
`
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`
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`-12-
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`
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