throbber
Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 7
`Entered: April 2, 2024
`
`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.,1
`Petitioners,
`
`v.
`
`MULTIMEDIA TECHNOLOGIES PTE. LTD.,
`Patent Owner.
`____________
`
`IPR2024-00351 (Patent 9,510,040 B2)
`IPR2024-00352 (Patent 9,247,174 B2)
` IPR2024-00354 (Patent 10,419,805 B2)
`IPR2024-00694 (Patent 9,510,040 B2)
`IPR2024-00696 (Patent 9,247,174 B2)
` IPR2024-00699 (Patent 10,419,805 B2)
`____________
`
`
`Before ST. JOHN COURTENAY III, MICHAEL R. ZECHER, and
`SHARON FENICK, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of Proceedings
`37 C.F.R. § 42.5(a)
`
`
`1 LG Electronics, Inc. and LG Electronics U.S.A., Inc. are the Petitioner in
`IPR2024-00351, IPR2024-00352, and IPR2024-00354, whereas VIZIO, Inc.
`is the Petitioner in IPR2024-00694, IPR2024-00696, and IPR2024-00699.
`
`

`

`IPR2024-00351 (Patent 9,510,040 B2)
`IPR2024-00352 (Patent 9,247,174 B2)
`IPR2024-00354 (Patent 10,419,805 B2)
`IPR2024-00694 (Patent 9,510,040 B2)
`IPR2024-00696 (Patent 9,247,174 B2)
`IPR2024-00699 (Patent 10,419,805 B2)
`
`
`
`I.
`BACKGROUND
`In December 2023, Petitioner, LG Electronics, Inc. and LG
`Electronics U.S.A., Inc. (collectively, “LG”), filed Petitions requesting inter
`partes reviews of U.S. Patent Nos. 9,510,040 B2 (IPR2024-00351, “the ’351
`IPR”), 9,247,174 B2 (IPR2024-00352, “the ’352 IPR”), and 10,419,805 B2
`(IPR2024-00354, “the ’354 IPR”) (collectively, “the LG cases”), each of
`which are owned by Patent Owner, Multimedia Technologies Pte. Ltd.
`(“Multimedia”). In these three proceedings, LG identified Mr. David
`McCombs as Lead Counsel (see e.g., IPR2024-00351, Paper 1 (Petition),
`95), and Multimedia identified Mr. Ryan Singer as Lead Counsel (see e.g.,
`IPR2024-00351, Paper 4 (Multimdedia’s Mandatory Notices), 3).
`On March 14, 2024, Petitioner, VIZIO, Inc. (“VIZIO”), filed copycat
`Petitions requesting inter partes reviews in IPR2024-00694, IPR2024-
`00696, and IPR2024-00699 (collectively, “the VIZIO cases”) involving the
`same three patents at issue in IPR2024-00351, IPR2024-00352, and
`IPR2024-00354, respectively. On that same day, VIZIO also filed Motions
`for Joinder in each of the VIZIO cases requesting joinder to each of the LG
`cases2 (see e.g., IPR2024-00694, Paper 3 (Petitioner’s Motion for Joinder)).
`
`
`2 The Motions for Joinder indicate IPR2024-00694 seeks joinder with
`IPR2024-00351, IPR2024-00696 seeks joinder with IPR2024-00352, and
`IPR2024-00699 seeks joinder with IPR2024-00354.
`
` 2
`
`
`
`
`
`
`

`

`IPR2024-00351 (Patent 9,510,040 B2)
`IPR2024-00352 (Patent 9,247,174 B2)
`IPR2024-00354 (Patent 10,419,805 B2)
`IPR2024-00694 (Patent 9,510,040 B2)
`IPR2024-00696 (Patent 9,247,174 B2)
`IPR2024-00699 (Patent 10,419,805 B2)
`
`The VIZIO cases were assigned to the same panel of Administrative Patent
`Judges that were assigned to the LG cases. VIZIO identified Mr. Steven
`Hartsell as Lead Counsel in the VIZIO cases (see e.g., IPR2024-00694,
`Paper 1 (Petition), 95).
`As of March 25, 2024, the date of the conference call discussed
`below, Multimedia had not entered Powers of Attorney or Mandatory
`Notices in the VIZIO cases.
`
`II. DISCUSSION
`On March 20, 2024, pursuant to the Consolidated Trial Practice Guide
`(November 2019),3 VIZIO sent an email communication to the Board
`requesting a conference call to discuss the Motion for Joinders filed in the
`VIZIO cases. Ex. 3001 (in all six proceedings). On March 25, 2024, Judges
`Courtenay, Zecher, and Fenick held a conference call with representatives of
`LG (Mr. McCombs), VIZIO (Mr. Hartsell), and Multimedia (Mr. Singer) to
`discuss the Motions for Joinder filed in the VIZIO cases. The parties in
`these six proceedings did not arrange for a court reporter.
`During the conference call, Multimedia’s counsel contended that the
`Motions for Joinder in the VIZIO cases were filed prematurely and, as a
`result, he asserted that we should dismiss the Motions for Joinder and
`
`
`3 Available at
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL=Tri
`alPracticeGuideConsolidated
`
` 3
`
`
`
`
`
`
`

`

`IPR2024-00351 (Patent 9,510,040 B2)
`IPR2024-00352 (Patent 9,247,174 B2)
`IPR2024-00354 (Patent 10,419,805 B2)
`IPR2024-00694 (Patent 9,510,040 B2)
`IPR2024-00696 (Patent 9,247,174 B2)
`IPR2024-00699 (Patent 10,419,805 B2)
`
`instruct VIZIO to refile them only if we were to grant institution in the LG
`cases. Multimedia’s counsel also represented that he intends to oppose the
`Motions for Joinder and file Preliminary Responses in the LG and VIZIO
`cases. In response, VIZIO’s counsel expressed concerns about the potential
`impact of dismissing the Motions for Joinder, especially if LG and
`Multimedia were to reach a settlement in the LG cases.
`As it stands now, the Preliminary Responses in the LG cases were
`filed on March 29, 2024 in the ’351 IPR (Paper 5) and on March 28, 2024 in
`the ’352 IPR (Paper 6), with a Preliminary Response (if any is filed)
`expected on or before April 11, 2024 (the ’354 IPR). We expect to issue
`decisions on institution in these three cases by late June 2024 or early July
`2024. See 35 U.S.C. § 314(b)(1), (2).
`Under the provisions of 37 C.F.R. § 42.25(a)(1) (2023), Multimedia’s
`Oppositions to the Motions for Joinder would be due by April 14, 2024, one
`month after VIZIO filed its copycat Petitions and Motions for Joinder on
`March 14, 2024. Preliminary Responses by Multimedia in response to the
`VIZIO Petitions are due by June 21, 2024 (see, e.g., IPR2024-00694, Paper
`4 (Notice of Filing Date Accorded to Petition and Time for Filing Patent
`Owner Preliminary Response)). Accordingly, Multimedia’s Oppositions to
`the Motions for Joinder and its Preliminary Responses would be due in the
`VIZIO cases before we enter institution decisions in the LG cases.
`
` 4
`
`
`
`
`
`
`

`

`IPR2024-00351 (Patent 9,510,040 B2)
`IPR2024-00352 (Patent 9,247,174 B2)
`IPR2024-00354 (Patent 10,419,805 B2)
`IPR2024-00694 (Patent 9,510,040 B2)
`IPR2024-00696 (Patent 9,247,174 B2)
`IPR2024-00699 (Patent 10,419,805 B2)
`
`
`Based on these unique circumstances, we exercise our authority under
`37 C.F.R. § 42.5(a) and (b) (2023) to suspend the due dates for Multimedia
`to file Oppositions to the Motions for Joinder and Preliminary Responses in
`the VIZIO cases. During the conference call, the parties agreed to the newly
`proposed due dates for filing Oppositions to the Motions for Joinders and
`Preliminary Responses in the VIZIO cases set forth below.
`III. ORDER
`
`It is:
`ORDERED that Multimedia’s Opposition to the Motion for Joinder,
`should it choose to file one, is due in each of the VIZIO cases two weeks
`after any institution decision, termination, or dismissal of the Petition in each
`of the LG cases;
`FURTHER ORDERED that VIZIO’s Reply to the Opposition, should
`it choose to file one, is due two weeks after any Opposition is filed in each
`of the VIZIO cases; and
`FURTHER ORDERED that Multimedia’s Preliminary Response in
`each of the VIZIO cases, should it choose to file one, is due one month after
`any institution decision, termination, or dismissal of the Petition in each of
`the LG cases, so long as that due date is not before the original due date for
`filing Multimedia’s Preliminary Responses in the VIZIO cases (i.e., June 21,
`2024).
`
`
` 5
`
`
`
`
`
`
`

`

`IPR2024-00351 (Patent 9,510,040 B2)
`IPR2024-00352 (Patent 9,247,174 B2)
`IPR2024-00354 (Patent 10,419,805 B2)
`IPR2024-00694 (Patent 9,510,040 B2)
`IPR2024-00696 (Patent 9,247,174 B2)
`IPR2024-00699 (Patent 10,419,805 B2)
`
`FOR PETITIONER VIZIO:
`
`Steven Hartsell
`Rex Hwang
`SKIERMONT DERBY LLP
`shartsell@skiermontderby.com
`rhwang@skiermontderby.com
`
`
`FOR PETITIONER LG:
`
`David L. McCombs
`Gregory P. Huh
`Calmann J. Clements
`HAYNES AND BOONE, LLP
`david.mccombs.ipr@haynesboone.com
`gregory.huh.ipr@haynesboone.com
`calmann.clements.ipr@haynesboone.com
`
`
`FOR PATENT OWNER:
`
`SHERIDAN ROSS P.C.
`1560 Broadway
`Suite 1200
`Denver, CO 80202
`
`Ryan J. Singer
`SCHULTE ROTH & ZABEL LLP
`ryan.singer@srz.com
`
`
`
` 6
`
`
`
`
`
`
`

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