Paper 7
`Trials@uspto.gov
`571-272-7822
`Date Entered: January 28, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC., and LG
`ELECTRONICS MOBILECOMM U.S.A., INC.,
`Petitioner,
`
`v.
`
`BLACK HILLS MEDIA, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00335
`Patent 6,108,686
`____________
`
`
`
`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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`
`
`Trials@uspto.gov
`571-272-7822
`Date Entered: January 28, 2015
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC., and LG
`ELECTRONICS MOBILECOMM U.S.A., INC.,
`Petitioner,
`
`v.
`
`BLACK HILLS MEDIA, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00335
`Patent 6,108,686
`____________
`
`
`
`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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`
`
`IPR2015-00335
`Patent 6,108,686
`
`
`
`Introduction
`
`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,
`
`Paper 2 (“Pet.”), to institute an inter partes review of claims 1, 2, 20, 23, 29,
`
`and 30 (the “challenged claims”) of U.S. Patent No. 6,108,686 (“the ’686
`
`Patent”). 35 U.S.C. § 311. Petitioner LG has also moved to join this
`
`proceeding with Samsung Electronics Co., Ltd. v. Black Hills Media, LLC,
`
`IPR2014-00717 (“the Samsung IPR”). Paper 3 (“Motion for Joinder”).
`
`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.
`
`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.
`
`Institution on the same grounds as those asserted in the Samsung IPR
`
`The Petition in this proceeding asserts the same grounds as those
`
`asserted in the Samsung IPR. On November 4, 2014, we instituted a trial in
`
`the Samsung IPR on the following grounds:
`
`
`Claims 1, 2, 20, 23, 29, and 30 under 35 U.S.C. § 102(e) as
`anticipated by U.S. Patent No. 5,740,549 (“Reilly”); and
`
`
`Claims 1, 2, 20, 23, 29, and 30 under 35 U.S.C. § 103(a) as
`obvious over Reilly and Jiri Weiss, New Places to Go Online,
`Vol. 14, No. 8, TECHNOLOGY & LEARNING 109–15
`(“Technology & Learning”).
`
`
`In view of the identity of the challenges in the instant Petition and
`
`those of the petition in the Samsung IPR, we institute an inter partes review
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`
`
`2
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`
`
`IPR2015-00335
`Patent 6,108,686
`
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`in this proceeding on the same grounds as those 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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`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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`IPR2015-00335 and grant Petitioner LG’s motion to join that proceeding to
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`IPR2014-00717.
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`In view of the foregoing, it is:
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`ORDER
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`ORDERED that IPR2015-00335 is instituted and joined with
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`IPR2014-00717;
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`
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`3
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`
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`IPR2015-00335
`Patent 6,108,686
`
`
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`FURTHER ORDERED that the grounds on which IPR2014-00717
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`was instituted are unchanged and no other grounds are instituted in the
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`joined proceeding;
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`FURTHER ORDERED that the Scheduling Order in place for
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`IPR2014-00717 (Paper 27) 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 IPR2015-00335 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 IPR2014-00717; and
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`FURTHER ORDERED that the case caption in IPR2014-00717 shall
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`be changed to reflect joinder with this proceeding in accordance with the
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`attached example.
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`4
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`
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`IPR2015-00335
`Patent 6,108,686
`
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`PETITIONER:
`
`Dori Johnson Hines
`Jonathan R. Stroud
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`dori.hines@finnegan.com
`jonathan.stroud@finnegan.com
`
`PATENT OWNER
`
`Andrew Crain
`Robert Gravois
`Kenneth Know
`THOMAS | HORSTEMEYER, LLP
`andrew.crain@thomashorstemeyer.com
`robert.gravois@thomashorstemeyer.com
`kenny.knox@thomashorstemeyer.com
`
`
`5
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`IPR2015-00335
`Patent 6,108,686
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`
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`Example Case Caption for Joined Proceeding
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`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 IPR2014-00717
`Case IPR2015-00335
`Patent 6,108,686
`
`
`
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`6
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`
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