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`571-272-7822
`Date Entered: January 28, 2015
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` UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`and
`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC., and
`LG ELECTRONICS MOBILECOMM U.S.A., INC.,
`Petitioners,
`
`v.
`
`BLACK HILLS MEDIA, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00709
`Case IPR2015-00337
`Patent 8,028,323 B2
`
`
`
`Before BRIAN J. McNAMARA, DAVID C. McKONE, and
`FRANCES L. IPPOLITO Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F R § 42.122(b)
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`
`
`Case IPR2014-00709
`Case IPR2015-00337
`Patent 8,028,323 B2
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`Introduction
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`LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics
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`MobileComm U.S.A., Inc. (collectively, “Petitioner LG”) filed a Petition,
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`Paper 2 (“Pet.”), to institute an inter partes review of claims 1–5, 10, 11, 13,
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`14, and 16–18 (the “challenged claims”) of U.S. Patent No. 8,028,323 B2
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`(“the ’323 Patent”). 35 U.S.C. § 311. Petitioner LG has also moved to join
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`this proceeding with Samsung Electronics Co., Ltd. v. Black Hills Media,
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`LLC, IPR2014-00709 (“the Samsung IPR”). Paper 3 (“Motion for Joinder”).
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`Black Hills Media, LLC (“Patent Owner”) and Samsung Electronics Co.,
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`Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications
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`America, LLC do not oppose Petitioner LG’s Motion for Joinder.
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`For the reasons described below, we institute an inter partes review of
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`all the challenged claims and grant Petitioner LG’s Motion for Joinder.
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`Institution on the same grounds as those asserted in the Samsung IPR
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`The Petition in this proceeding asserts the same grounds as those
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`asserted in the Samsung IPR. On November 4, 2014, we instituted a trial in
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`the Samsung IPR on the following ground:
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`
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`
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`Claims 1–5, 10, 11, 13, 14, and 16–18 of the ’323 patent
`are unpatentable under 35 U.S.C. § 103 over U.S. Patent No.
`7,454,511 B2 (“Weast”) and U.S. Patent No. 7,668,939 B2
`(“Encarnacion”).
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`In view of the identity of the challenges in the instant Petition and
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`those of the petition in the Samsung IPR, we institute an inter partes review
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`in this proceeding on the same ground as that on which we instituted the
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`Samsung IPR. We do not institute inter partes review on any other grounds.
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`2
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`Case IPR2014-00709
`Case IPR2015-00337
`Patent 8,028,323 B2
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`Joinder with the Samsung IPR
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`The Petition in this proceeding has been accorded a filing date of
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`December 3, 2014, and therefore satisfies the joinder requirement of being
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`filed within one month of our instituting a trial in the Samsung IPR.
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`37 C.F.R. § 42.122(b). In a teleconference on December 9, 2014, counsel
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`for Petitioner LG represented that the only grounds Petitioner LG seeks to
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`pursue in this proceeding are those on which we instituted the Samsung IPR.
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`Counsel for Petitioner LG also agreed that all filings in the joined
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`proceeding would be made by the petitioner in the Samsung IPR (“Petitioner
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`Samsung”) and that Petitioner LG would not seek discovery other than that
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`sought by Petitioner Samsung. Petitioner Samsung and Petitioner LG
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`further agreed to resolve any disputes between them concerning the conduct
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`of the joined proceeding and to contact the Board if any such matters cannot
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`be resolved. The parties agreed that no additional burdens would be placed
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`on Patent Owner as a result of the joinder.
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`In consideration of the above, we institute an inter partes review in
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`IPR2015-00337 and grant Petitioner LG’s motion to join that proceeding to
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`IPR2014-00709.
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`In view of the foregoing, it is:
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`ORDER
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`ORDERED that IPR2015-00337 is instituted and joined with
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`IPR2014-00709;
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`3
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`
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`Case IPR2014-00709
`Case IPR2015-00337
`Patent 8,028,323 B2
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`FURTHER ORDERED that the ground on which IPR2014-00709 was
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`
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`instituted is unchanged and no other grounds are instituted in the joined
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`proceeding;
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`FURTHER ORDERED that the Scheduling Order in place for
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`IPR2014-00709 (Paper 12) is unchanged and applies to the joined
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`proceeding;
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`FURTHER ORDERED that throughout the joined proceeding,
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`Petitioner Samsung will file all papers jointly on behalf of Petitioner
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`Samsung and Petitioner LG;
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`FURTHER ORDERED that except as otherwise agreed by counsel,
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`Petitioner Samsung will conduct cross-examination and other discovery on
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`behalf of Petitioner Samsung and Petitioner LG and that Patent Owner is not
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`required to provide separate discovery responses or additional deposition
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`time as a result of the joinder;
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`FURTHER ORDERED that IPR2015-00337 is terminated under 37
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`C.F.R. § 42.72 and all further filings in the joined proceeding are to be made
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`in IPR2014-00709; and
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`FURTHER ORDERED that the case caption in IPR2014-00709 shall
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`be changed to reflect joinder with this proceeding in accordance with the
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`caption on this order.
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`4
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`Case IPR2014-00709
`Case IPR2015-00337
`Patent 8,028,323 B2
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`PETITIONER SAMSUNG:
`Andrea Reister
`Gregory Discher
`Jay Alexander
`COVINGTON & BURLING LLP
`areister@cov.com
`gdischer@cov.com
`jalexander@cov.com
`
`PETITIONER LG:
`
`Dori Johnson Hines
`Jonathan R. Stroud
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`dori.hines@finnegan.com
`jonathan.stroud@finnegan.com
`
`PATENT OWNER
`
`Lana Gladstein
`Thomas Engellenner
`PEPPER HAMILTON LLP
`gladsteinl@pepperlaw.com
`engellennert@pepperlaw.com
`
`Christopher Horgan
`CONCERT TECHNOLOGY
`chris.horgan@concerttechnology.com
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`5
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