Trials@uspto.gov
`571-272-7822
`
`
`
`
` Paper No. 11
` Date: June 24, 2024
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`MULTIMEDIA TECHNOLOGIES PTE. LTD.,
`Patent Owner.
`____________
`
`IPR2024-00694
`Patent 9,510,040 B2
`____________
`
`
`
`Before ST. JOHN COURTENAY III, MICHAEL R. ZECHER, and
`SHARON FENICK, Administrative Patent Judges.
`
`ZECHER, 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 No. 11
` Date: June 24, 2024
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`MULTIMEDIA TECHNOLOGIES PTE. LTD.,
`Patent Owner.
`____________
`
`IPR2024-00694
`Patent 9,510,040 B2
`____________
`
`
`
`Before ST. JOHN COURTENAY III, MICHAEL R. ZECHER, and
`SHARON FENICK, Administrative Patent Judges.
`
`ZECHER, 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
`
`
`
`
`
`
`
`IPR2024-00694
`Patent 9,510,040 B2
`
`
`I. INTRODUCTION
`
`On March 14, 2024, Petitioner, VIZIO, Inc. (“VIZIO”), filed a
`Petition requesting an inter partes review (“IPR”) of claims 1–6, 11–16, 21,
`and 22 of U.S. Patent No. 9,510,040 B2 (Ex. 1001, “the ’040 patent”).
`Paper 1 (“Petition” or “Pet.”). VIZIO filed its Petition along with a Motion
`for Joinder requesting that we join VIZIO as a party with LG Electronics,
`Inc. v. Multimedia Technologies Pte. Ltd., IPR2024-00351 (“LG IPR”).
`Paper 3 (“Mot. for Joinder”).
`On May 21, 2024, we entered a Decision on Institution in the LG IPR,
`in which we instituted an IPR as to claims 1–6, 11–16, 21, and 22 of the
`’040 patent. See LG IPR, Paper 9 (“LG IPR Dec. on Inst.”). The Petition
`and supporting evidence filed in this proceeding are substantively identical
`to the petition and supporting evidence filed in the LG IPR. Compare LG
`IPR, Paper 1 (“LG IPR Petition”), 1–103, and Exs. 1001–1013, with Pet. 1–
`102, and Exs. 1001–1013. Moreover, VIZIO represents that it is willing to
`limit the asserted grounds of unpatentability (“grounds”) to the same
`grounds asserted in the LG IPR. Mot. for Joinder 5–6. VIZIO also
`represents that, if it is allowed to join the LG IPR, it will assume an
`“understudy” role (i.e., a passive role) and will assume an active role only in
`the event that the petitioner in the LG IPR, LG Electronics, Inc. and LG
`Electronics U.S.A., Inc. (collectively, “LG”), ceases to participate in the LG
`IPR and the LG IPR terminates only with respect to LG.1 Mot. for Joinder
`8.
`
`
`1 For example, in its understudy role, VIZIO may not file any paper or
`exhibit in the LG IPR separate and apart from LG, absent our express
`authorization.
`
`
`
`2
`
`
`
`IPR2024-00694
`Patent 9,510,040 B2
`
`
`In this proceeding, Patent Owner Multimedia Technologies Pte. Ltd.
`(“Multimedia”) did not file an opposition to VIZIO’s Motion for Joinder,
`nor did Multimedia elect to file a Preliminary Response. Ex. 3002.
`Under 35 U.S.C. § 314(a), an IPR may not be instituted unless the
`information presented in the Petition shows “there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” For the reasons we discuss below, we institute
`an IPR as to claims 1–6, 11–16, 21, and 22 of the ’040 patent, and we grant
`VIZIO’s Motion for Joinder.
`
`
`II. INSTITUTION OF IPR
`In the LG IPR, we instituted an IPR as to 1–6, 11–16, 21, and 22 of
`the ’040 patent based on the asserted grounds set forth in the table below.
`LG IPR Dec. on Inst. 37–38.
`Claim(s) Challenged
`1–5, 11–15, 21
`2, 3, 6, 12, 13, 16, 22
`
`35 U.S.C. § Reference(s)/Basis
`§ 103(a)2
`Kim, 3 Lee-1,4 Choi5
`§ 103(a)
`Kim, Lee-1, Choi, Lee-26
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
`2013. Because the ’040 patent claims the benefit of U.S. Patent Provisional
`Application No. 61/684,672, which was filed on August 17, 2012, the pre-
`AIA version of § 103 applies. Ex. 1001, code (60).
`3 Kim, US 2012/0054791 A1 (published Mar. 1, 2012; filed Mar. 9, 2011).
`4 Lee et al. (“Lee-1) US 9,008,190 B2 (issued Apr. 14, 2015; filed Jan. 4,
`2010).
`5 Choi, US 2013/0057764 A1 (published Mar. 7, 2013; filed June 28, 2012).
`6 Lee et al. (“Lee-2) US 9,398,339 B2 (issued July 19, 2016; filed Dec. 16,
`2010).
`
`
`
`3
`
`
`
`IPR2024-00694
`Patent 9,510,040 B2
`
`As we indicate previously, the Petition and supporting evidence filed in this
`proceeding are essentially the same as the LG IPR Petition and supporting
`evidence filed in the LG IPR, and VIZIO is willing to limit the asserted
`grounds in this proceeding to the same grounds asserted in the LG IPR.
`Mot. for Joinder 5–6.
`As we explain below, we grant VIZIO’s Motion for Joinder. Given
`that we are granting VIZIO’s Motion for Joinder, we determine that the
`information presented in the Petition establishes that there is a reasonable
`likelihood that VIZIO would prevail in challenging claims 1–6, 11–16, 21,
`and 22 of the ’040 patent as unpatentable as obvious under § 103(a) for the
`same reasons already set forth in the Decision on Institution in the LG IPR.
`See LG IPR Dec. on Inst. Pursuant to § 314, we institute an IPR as to these
`claims of the ’040 patent.
`
`
`III. GRANTING VIZIO’S MOTION FOR JOINDER
`Based on authority delegated to us by the Director, we have discretion
`to join a petitioner requesting an IPR as a party to another IPR, subject to
`certain exceptions not present here. 35 U.S.C. § 315(c). The regulatory
`provisions governing an IPR address the appropriate timeframe for filing a
`motion for joinder. Section 42.122(b) of Title 37 of the Code of Federal
`Regulations provides, in relevant part, “[a]ny request for joinder must be
`filed, as a motion under § 42.22, no later than one month after the institution
`date of any inter partes review for which joinder is requested.”
`
`The Petition in this proceeding was accorded a filing date of March
`14, 2024 (Paper 4 (Notice of Filing Date Accorded to Petition and Time for
`Filing Patent Owner Preliminary Response), 1), and the Motion for Joinder
`
`
`
`4
`
`
`
`IPR2024-00694
`Patent 9,510,040 B2
`
`was filed on the same day. As such, VIZIO’s Motion for Joinder was timely
`because joinder was requested no later than one month after May 21, 2024,
`the institution date of the LG IPR. See LG IPR Dec. on Inst.
`
`In its Motion for Joinder, VIZIO contends that joinder is appropriate
`because this proceeding and the LG IPR are substantively identical (i.e., they
`involve the same claims, the same patent, the same prior art references, the
`same expert declaration, and the same arguments and evidence). See Mot.
`for Joinder 4–6. Stated differently, VIZIO asserts that the Petition and
`supporting evidence filed in this proceeding do not raise any new substantive
`or procedural issues. See id. VIZIO further argues that, because it is willing
`to work with counsel for LG (i.e., as an understudy) to consolidate all filings
`and discovery, joinder will not impact the schedule of the LG IPR, thereby
`allowing us to complete a single consolidated proceeding in a timely
`manner. Id. at 6–9. VIZIO also argues that, if it is joined as a party with the
`LG IPR, Multimedia will not suffer any prejudice because granting joinder
`under these circumstances will not add new issues for consideration by or
`costs to Multimedia above and beyond those already presented in the LG
`IPR, nor will granting joinder affect the issues, briefing, or discovery in the
`LG IPR, as they will remain the same. Id. at 9–10.
`Given that Multimedia did not oppose VIZIO’s Motion for Joinder
`(Ex. 3002), and VIZIO agrees to consolidate all filings and discovery with
`LG (Mot. for Joinder 6–9), VIZIO has demonstrated that joinder will not
`unduly complicate or delay the LG IPR. See 37 C.F.R. § 42.1(b) (providing
`for “the just, speedy, and inexpensive resolution of every proceeding”
`(emphases added)). We, therefore, grant VIZIO’s Motion for Joinder and, as
`a result, join VIZIO as a party with the LG IPR.
`
`
`
`5
`
`
`
`IPR2024-00694
`Patent 9,510,040 B2
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a) and 37 C.F.R. § 42.4,
`an IPR is instituted as to claims 1–6, 11–16, 21, and 22 of the ’040 patent;
`FURTHER ORDERED that VIZIO’s Motion for Joinder is granted,
`and VIZIO is joined as a party with IPR2024-00351;
`FURTHER ORDERED that the grounds on which an IPR was
`instituted in IPR2024-00351 remain unchanged, and no other grounds are
`instituted in the joined proceedings;
`FURTHER ORDERED that IPR2024-00694 is instituted, joined with
`IPR2024-00351, and all further filings in these joined proceedings shall be
`made in IPR2024-00351;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2024-00351 (Paper 10) shall govern the schedule of these joined
`proceedings;
`FURTHER ORDERED that VIZIO’s participation in the briefing,
`depositions, and oral argument of these joined proceedings shall be subject
`to LG’s acquiescence to VIZIO’s participation and, absent our express
`authorization, VIZIO shall not file papers or exhibits separate and apart from
`LG;
`
`FURTHER ORDERED that the roles of LG and Multimedia in these
`joined proceedings remain unchanged;
`FURTHER ORDERED that the case caption in IPR2024-00351 shall
`be changed to reflect that VIZIO has been joined as a party in accordance
`with the attached example; and
`
`
`
`6
`
`
`
`IPR2024-00694
`Patent 9,510,040 B2
`
`
`FURTHER ORDERED that a copy of this Decision be entered into
`the file of IPR2024-00351.
`
`
`
`7
`
`
`
`IPR2024-00694
`Patent 9,510,040 B2
`
`For PETITIONER:
`
`Steven W. Hartsell
`Rex Hwang
`SKIERMONT DERBY LLP
`shartsell@skiermontderby.com
`rhwang@skiermontderby.com
`
`
`For PATENT OWNER:
`
`James T. Carmichael
`Stephen McBride
`Minghui Yuang
`CARMICHAEL IP, PLLC
`jim@carmichaelip.com
`stevemcbride@carmichaelip.com
`mitch@carmichaelip.com
`
`Ryan J. Singer
`SCHULTE ROTH & ZABELL LLP
`ryan.singer@srz.com
`
`
`
`
`
`
`8
`
`
`
`IPR2024-00694
`Patent 9,510,040 B2
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC., and
`VIZIO, INC.
`Petitioners,
`
`v.
`
`MULTIMEDIA TECHNOLOGIES PTE. LTD.,
`Patent Owner.
`____________
`
`IPR2024-0035117
`Patent 9,510,040 B2
`____________
`
`
`
`
`
`
`
`17 VIZIO, Inc. filed a petition in IPR2024-00694 and was joined as petitioner
`in this proceeding.
`
`
`
`
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