UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`MULTIMEDIA TECHNOLOGIES PTE. LTD.,
`Patent Owner.
`____________
`
`Case IPR2024-00696
`Patent 9,247,174
`____________
`
`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, and 42.122(b)
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`MULTIMEDIA TECHNOLOGIES PTE. LTD.,
`Patent Owner.
`____________
`
`Case IPR2024-00696
`Patent 9,247,174
`____________
`
`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, and 42.122(b)
`
`
`
`TABLE OF CONTENTS
`
`I.
`II.
`III.
`
`STATEMENT OF RELIEF REQUESTED .................................................... 1
`STATEMENT OF MATERIAL FACTS ........................................................ 2
`STATEMENT OF REASONS FOR REQUESTED RELIEF ........................ 3
`A.
`Legal Standards ..................................................................................... 3
`VIZIO’s Motion for Joinder Is Timely ................................................. 4
`B.
`The Dell Factors Favor Joinder ............................................................. 4
`C.
`No New Grounds of Unpatentability in the VIZIO
`1.
`Petition ........................................................................................ 5
`No Impact on the Schedule for the LG IPR Proceeding ............. 6
`2.
`Briefing and Discovery Will Be Simplified ............................... 7
`3.
`No Prejudice to Patent Owner ..................................................... 9
`4.
`IV. CONCLUSION .............................................................................................. 10
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Dell, Inc. v. Network-1 Security Solutions, Inc.,
`IPR2013-00385, Paper 17 (PTAB July 29, 2013) ................................................. 3
`Enzymotec Ltd. v. Neptune Techs & Bioresources, Inc.,
`IPR2014-00556, Paper 19 (PTAB July 9, 2014) ................................................... 4
`Noven Pharm., Inc. v. Novartis AG,
`IPR2014-00550, Paper 38 (PTAB April 10, 2015) ............................................... 8
`Oracle America Inc. v. Realtime Data LLC,
`IPR2016-01672, Paper 13 (PTAB Mar. 7, 2017) .................................................. 4
`Samsung Elecs. Co., Ltd. v. Raytheon Co.,
`IPR2016-00962, Paper 12 (PTAB Aug. 24, 2016) ................................................ 5
`Sony Corp. v. Memory Integrity, LLC.,
`IPR2015-01353, Paper 11 at 6-7 (PTAB Oct. 5, 2015) ......................................... 9
`Taiwan Semiconductor Mfg. Co., Ltd. v. Zond LLC,
`IPR2014-00781 and IPR2014-00782, Paper 5 at 3 (PTAB May 29,
`2014)....................................................................................................................... 3
`Statutes
`35 U.S.C. § 315(c) .................................................................................................1, 3
`35 U.S.C. § 316(a)(11) ............................................................................................... 7
`Regulations
`
`37 C.F.R. § 42.100(c) ................................................................................................. 7
`37 C.F.R. § 42.122(b) ....................................................................................... 1, 3, 4
`37 C.F.R. §§ 42.22 ..................................................................................................... 1
`Other Authorities
`157 CONG. REC. S1376 ........................................................................................... 3
`
`ii
`
`
`
`I.
`
`STATEMENT OF RELIEF REQUESTED
`VIZIO, Inc. (“VIZIO” or “Petitioner”) respectfully submits this Motion for
`
`Joinder, concurrently with a Petition (“VIZIO’s Petition”) for inter partes review
`
`of U.S. Patent No. 9,247,174.
`
`Pursuant to 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, and 42.122(b), VIZIO
`
`requests inter partes review and joinder with LG Electronics, Inc., LG Electronics
`
`U.S.A., Inc. v. Multimedia Technologies Pte. Ltd., IPR2024-00352 (“the LG IPR”),
`
`which was filed on December 20, 2023. VIZIO’s Petition is substantively identical
`
`to the petition in the LG IPR—challenging the same claims of the ’174 patent on
`
`the same grounds while relying on the same prior art, arguments, and evidence.
`
`This Motion for Joinder and accompanying Petition are timely being filed before a
`
`decision instituting trial in the LG IPR. Counsel for VIZIO has conferred with
`
`petitioner’s counsel in the LG IPR, and LG does not oppose this Motion for
`
`Joinder.
`
`VIZIO is currently being sued by Patent Owner for alleged infringement of
`
`the ’174 patent in an action styled Multimedia Technologies Pte. Ltd. v. VIZIO
`
`Inc., No. 2:23-cv-00124-JRG-RSP (E.D. Tex.). VIZIO has not previously filed any
`
`petitions before the PTAB challenging the validity of the ’174 patent.
`
` Joinder is appropriate here because (i) VIZIO’s Petition is substantively
`
`identical to the petition in the LG IPR, (ii) VIZIO agrees to an “understudy role,”
`
`1
`
`
`
`and (iii) VIZIO relies upon the same expert declaration as relied upon in the LG
`
`IPR, simplifying briefing and discovery. Accordingly, joinder will provide for a
`
`just, speedy, and inexpensive determination of related proceedings.
`
`Therefore, VIZIO respectfully requests that the Board grant this Motion for
`
`Joinder.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`1.
`The owner of the ’174 patent, Multimedia Technologies Pte. Ltd.
`
`(“MMT”), sued VIZIO alleging infringement of the ’174 patent in the United
`
`States District Court for the Eastern District of Texas.
`
`2.
`
`VIZIO was served with MMT’s (“MMT”) complaint on March 27,
`
`2023.
`
`3.
`
`On December 20, 2023, LG Electronics, Inc., LG Electronics U.S.A.,
`
`Inc. (collectively, “LG”), which had also been served with a complaint alleging
`
`infringement of the ’174 patent, timely filed a Petition for inter partes review
`
`challenging claims 1-14 of the ’174 patent. See LG Electronics, Inc., LG
`
`Electronics U.S.A., Inc. v. Multimedia Technologies Pte. Ltd., IPR2024-00352,
`
`Paper 1 (PTAB Dec. 20, 2023).
`
`4.
`
`VIZIO’s Petition and this Motion for Joinder are being filed before a
`
`decision on institution of the LG IPR.
`
`2
`
`
`
`III. STATEMENT OF REASONS FOR REQUESTED RELIEF
`A. Legal Standards
`A petitioner may request joinder, without prior authorization, up to one
`
`month after the institution date of the proceeding to which joinder is requested. 37
`
`C.F.R. § 42.122(b); Taiwan Semiconductor Mfg. Co., Ltd. v. Zond LLC, IPR2014-
`
`00781 and IPR2014-00782, Paper 5 at 3 (PTAB May 29, 2014).
`
`The Board may grant a motion seeking to join a petitioner for inter partes
`
`review to another inter partes review proceeding. See 35 U.S.C. § 315(c). In
`
`determining whether to exercise its discretion to grant a motion for joinder, the
`
`Board considers the following: (1) reasons why joinder is appropriate; (2) any new
`
`grounds of unpatentability asserted in the petition; (3) what impact (if any) joinder
`
`would have on the trial schedule for the existing review; and (4) specifically how
`
`briefing and discovery may be simplified. See Dell, Inc. v. Network-1 Security
`
`Solutions, Inc., IPR2013-00385, Paper 17 at 4 (PTAB July 29, 2013).
`
`Further, the legislative history of the AIA suggests that joinder may be
`
`granted as a matter of right where the later petitioner files an identical petition with
`
`identical grounds of unpatentability. See 157 CONG. REC. S1376 (daily ed. Mar.
`
`8, 2011) (statement of Sen. Kyl) (“The Office anticipates that joinder will be
`
`allowed as of right-if an inter partes review is instituted on the basis of a petition,
`
`for example, a party that files an identical petition will be joined to that
`
`3
`
`
`
`proceeding, and thus allowed to file its own briefs and make its own arguments.”)
`
`(emphasis added).
`
`B. VIZIO’s Motion for Joinder Is Timely
`A motion for joinder is timely if the moving party files within one month of
`
`institution of the inter partes review for which joinder is requested. 37 C.F.R. §
`
`42.122(b). Because VIZIO files this Motion before a decision on the institution of
`
`the LG IPR, this Motion is timely. Id. Additionally, this Motion is being filed
`
`before any motions have been filed requesting termination of the LG IPR.
`
`C. The Dell Factors Favor Joinder
`Each of the four Dell factors weighs in favor of granting VIZIO’s Motion for
`
`Joinder. Dell, IPR2013-00385, Paper 17 at 4. Specifically, VIZIO’s Petition does
`
`“not present issues that might complicate or delay” the LG IPR. See Enzymotec
`
`Ltd. v. Neptune Techs & Bioresources, Inc., IPR2014-00556, Paper 19 at 6 (PTAB
`
`July 9, 2014) (“we are mindful of a policy preference for joining a party that does
`
`not present new issues that might complicate or delay an existing proceeding”). In
`
`fact, because VIZIO’s Petition is substantively identical to the petition in the LG
`
`IPR, joinder would secure the just, speedy, and inexpensive resolution of the
`
`related proceedings. See, e.g., Oracle America Inc. v. Realtime Data LLC,
`
`IPR2016-01672, Paper 13 at 7 (PTAB Mar. 7, 2017) (noting that “joining Oracle’s
`
`4
`
`
`
`identical challenges to those in the 1002 IPR will lead to greater efficiency while
`
`reducing the resources necessary from both Realtime and the Board.”).
`
`Joinder would have little, if any, impact on the LG IPR because, as detailed
`
`below, no new grounds would be added, the schedule would not be affected, no
`
`additional briefing or discovery would be required, and no additional burdens
`
`would be placed on Patent Owner. The Board “routinely grants motions for joinder
`
`where the party seeking joinder introduces identical arguments and the same
`
`grounds raised in the existing proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon
`
`Co., IPR2016-00962, Paper 12 at 9 (PTAB Aug. 24, 2016) (internal quotations and
`
`citations omitted).
`
`Further, if LG moves to terminate the LG IPR and is dismissed before the
`
`Board decides this Motion for Joinder, VIZIO respectfully requests that the Board
`
`exercise its discretion and decline to terminate the LG IPR at least until the Board
`
`considers this Motion.
`
`Accordingly, joinder is appropriate because it eliminates the possibility of
`
`duplicate efforts and ensures a just, speedy, and inexpensive resolution of these
`
`related proceedings.
`
`1.
`No New Grounds of Unpatentability in the VIZIO Petition
`VIZIO’s Petition is substantively identical to the petition in the LG IPR.
`
`VIZIO’s Petition challenges the same claims, under the same grounds, while
`
`5
`
`
`
`relying on the same arguments, expert declaration, and evidence. Accordingly, no
`
`new claims and no new grounds will be added to the LG IPR as a result of the
`
`Board allowing joinder. Denial of joinder, however, would result in parallel
`
`proceedings involving identical grounds of unpatentability and needless
`
`duplication of effort.
`
`2.
`No Impact on the Schedule for the LG IPR Proceeding
`Because VIZIO’s Petition challenges no additional claims and raises no new
`
`grounds of unpatentability, joinder should have no impact on any trial schedule
`
`issued in the LG IPR. Further, VIZIO will adhere to all applicable deadlines set
`
`forth in any LG IPR Scheduling Order and will coordinate with LG’s counsel to
`
`consolidate filings. Additionally, no additional expert discovery will be needed as
`
`VIZIO’s Petition relies upon the same declaration testimony from the same expert,
`
`Dr. Andrew Lippman, as relied upon by the petition in the LG IPR.
`
`Additionally, if joined, VIZIO will not file additional briefs outside of the
`
`consolidated filings, will not request any additional deposition time, and will not
`
`request any additional oral hearing time.1 In the event the LG IPR is terminated
`
`
`1 While VIZIO will not materially participate in calls with the Board, depositions,
`
`and any oral hearing, VIZIO anticipates that its counsel may attend such events.
`
`6
`
`
`
`with respect to the LG petitioners, VIZIO intends to “step into the shoes” of the
`
`dismissed LG petitioners and materially participate in the joined proceedings.
`
`Accordingly, for the reasons above, joinder of VIZIO to the LG IPR will not
`
`affect the Board’s ability to complete its review and issue a final decision within
`
`the statutory time limits under 35 U.S.C. § 316(a)(11) and 37 C.F.R. § 42.100(c).
`
`3.
`Briefing and Discovery Will Be Simplified
`Given that VIZIO’s positions in its petition are identical to the positions in
`
`the LG IPR, VIZIO agrees to consolidated filings for all substantive papers and to
`
`consolidated discovery in the joined proceeding. VIZIO explicitly agrees to take an
`
`“understudy” role, described by the Board in other proceedings as follows:
`
`(a)
`
`VIZIO shall not make any substantive filing and shall be bound by
`
`the LG Petitioners, unless a filing concerns termination and settlement, or issues
`
`solely involving VIZIO.
`
`(b) VIZIO shall not present any argument or make any presentation at
`
`oral hearing unless an issue solely involves VIZIO, or when addressing Board-
`
`approved motions that do not affect the LG Petitioners, or their respective position;
`
`Additionally, VIZIO’s role does not foreclose communication between VIZIO and
`
`the petitioners in the LG IPR.
`
`7
`
`
`
`(c) VIZIO shall not seek to cross-examine or defend the cross
`
`examination of any witness, unless the topic of cross-examination concerns issues
`
`solely involving VIZIO;
`
`(d) VIZIO shall not seek discovery from Patent Owner on issues not
`
`solely involving VIZIO;
`
`(e) VIZIO will not rely on expert testimony beyond that submitted by the
`
`LG Petitioners unless the LG Petitioners are terminated from the case prior to any
`
`necessary depositions. If the LG Petitioners are not terminated from the case prior
`
`to any necessary depositions, VIZIO agrees to rely entirely on, and be bound by,
`
`the expert declarations and depositions in the LG IPR.
`
`See, e.g., Noven Pharm., Inc. v. Novartis AG, IPR2014-00550, Paper 38 at 5
`
`(PTAB April 10, 2015).
`
`Unless and until the LG petitioners cease to participate in the LG IPR
`
`proceeding, VIZIO will not assume an active role. VIZIO will assume the primary
`
`role only if LG ceases to participate in the LG IPR and the LG IPR terminates. The
`
`petitioners in the LG IPR have no objection to VIZIO joining in an “understudy”
`
`role.
`
`Accordingly, due to VIZIO taking only an “understudy” role, Patent Owner
`
`and the LG Petitioners will only need to respond to one principal set of papers, will
`
`not require additional time to address additional arguments, and can thus proceed
`
`8
`
`
`
`with the existing trial schedule. These steps will minimize or eliminate any
`
`potential complications or delay that could potentially result from joinder. See
`
`Sony Corp. v. Memory Integrity, LLC., IPR2015-01353, Paper 11 at 7 (PTAB Oct.
`
`5, 2015) (granting motion because “joinder would increase efficiency by
`
`eliminating duplicative filings and discovery and would reduce costs and burdens
`
`on the parties as well as the Board” where second petitioner agreed to
`
`“understudy” role). VIZIO will also abide by any additional conditions the Board
`
`deems appropriate for an “understudy” role.
`
`By accepting an “understudy” role, VIZIO can comply with any schedule in
`
`the LG IPR and avoid any duplication of effort by the Board or the Patent Owner.
`
`These steps will minimize any potential complications or delay that potentially
`
`may have resulted by joinder.
`
`4.
`No Prejudice to Patent Owner
`Joinder of VIZIO to the LG IPR will not create any additional burden on
`
`Patent Owner. No additional grounds or arguments are being introduced, no new
`
`evidence or issues are being added, and no additional discovery or briefing or oral
`
`argument should be necessary because of VIZIO’s joinder. Thus, the Patent Owner
`
`would not need to expend any additional resources beyond those required in the
`
`current LG IPR proceeding.
`
`9
`
`
`
`Moreover, joinder eliminates the need for Patent Owner to participate in
`
`parallel inter partes review proceedings instituted upon identical grounds of
`
`patentability.
`
`IV. CONCLUSION
`For the foregoing reasons, VIZIO respectfully requests that the Board
`
`institute the instant inter partes review upon the same grounds set forth in
`
`IPR2024-00352 and join the proceedings.
`
`10
`
`
`
`Dated: March 14, 2024
`
`Respectfully Submitted,
`
`/Steven W. Hartsell/
`Steven W. Hartsell (Reg. No. 58,788)
`SKIERMONT DERBY LLP
`1601 Elm Street, Suite 4400
`Dallas, TX 75201
`Tel: (214) 978-6600
`Fax: (214) 978-6601
`VIZIO_SDTeam@skiermontderby.com
`Lead Counsel for Petitioner
`
`Rex Hwang (Reg. No. 56,206)
`Skiermont Derby LLP
`633 W. Fifth Street, Suite 5800
`Los Angeles, CA 90071
`Tel: (213) 788-4500
`Fax: (213) 788-4545
`VIZIO_SDTeam@skiermontderby.com
`Back-Up Counsel for Petitioner
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on
`
`counsel for Patent Owner a true and correct copy of the foregoing Petitioner’s
`
`Motion for Joinder Under 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, and 42.122(b)
`
`on March 14, 2024 by delivering a copy to the attorneys of record for Patent
`
`Owner as follows:
`
`Per USPTO records via Federal Express:
`
`Sheridan Ross P.C.
`1560 Broadway, Suite 1200
`Denver, CO 80202
`
`By electronic mail:
`
`Timothy K. Gilman tim.gilman@srz.com
`Christoper M. Gerson chris.gerson@srz.com
`Saunak K. Desai saunak.desai@srz.com
`Gregory R. Springsted gregory.springsted@srz.com
`John P. Mixon john.mixon@srz.com
`Ramya A. Sundaram raymy.sundaram@srz.com
`Robert Christopher Bunt rcbunt@pbatyler.com
`Charles Ainsworth charley@pbatyler.com
`MultimediaTechnologiesLitigations@srz.com
`
`Dated: March 14, 2024
`
`Respectfully Submitted,
`
`/Steven W. Hartsell/
`Steven W. Hartsell (Reg. No. 58,788)
`Lead Counsel for Petitioner
`
`
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