Paper No. 11
`Trials@uspto.gov
`571.272.7822
`
` Filed: October 15, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORP., SONY ELECTRONICS INC.,
`SONY MOBILE COMMUNICATIONS AB,
`SONY MOBILE COMMUNICATIONS (USA) INC.,
`LG ELECTRONICS, INC., LG ELECTRONICS USA, INC., and
`LG ELECTRONICS MOBILECOMM USA, INC.,
`Petitioner,
`
`v.
`
`MEMORY INTEGRITY, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01353
`Patent 7,296,121 B2
`____________
`
`
`
`
`Before JENNIFER S. BISK, NEIL T. POWELL, and KERRY BEGLEY,
`Administrative Patent Judges.
`
`
`
`BISK, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review, Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. §§ 42.108, 42.122
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571.272.7822
`
` Filed: October 15, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORP., SONY ELECTRONICS INC.,
`SONY MOBILE COMMUNICATIONS AB,
`SONY MOBILE COMMUNICATIONS (USA) INC.,
`LG ELECTRONICS, INC., LG ELECTRONICS USA, INC., and
`LG ELECTRONICS MOBILECOMM USA, INC.,
`Petitioner,
`
`v.
`
`MEMORY INTEGRITY, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01353
`Patent 7,296,121 B2
`____________
`
`
`
`
`Before JENNIFER S. BISK, NEIL T. POWELL, and KERRY BEGLEY,
`Administrative Patent Judges.
`
`
`
`BISK, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review, Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. §§ 42.108, 42.122
`
`
`
`
`
`
`
`
`
`IPR2015-01353
`Patent 7,296,121 B2
`
`
`
`
`
`Sony Corp., Sony Electronics Inc., Sony Mobile Communications
`AB, Sony Mobile Communications (USA) Inc. (collectively, “Sony”),
`LG Electronics, Inc., LG Electronics USA, Inc., and LG Electronics
`Mobilecomm USA, Inc. (collectively, “LG”) filed a Petition requesting inter
`partes review of claims 4–6, 11, 12, and 19–24 of U.S. Patent No. 7,296,121
`B2 (Ex. 1001, “the ’121 patent”). Paper 1 (“Pet.”). Along with the Petition,
`Sony and LG filed a motion for joinder with IPR2015-00163, Apple Inc. v.
`Memory Integrity, LLC, a pending inter partes review involving the
`’121 patent. Paper 4 (“Mot.”).1
`Memory Integrity, LLC (“Patent Owner”), with prior authorization
`from the Board, filed a notice that it seeks to rely on its Preliminary
`Response filed in IPR2015-00163. Paper 10. We treat Patent Owner’s
`Preliminary Response in IPR2015-00163 as having been filed in this case.
`See IPR2015-00163, Paper 13 (“Prelim. Resp.”).
`Patent Owner has not filed an opposition to the Motion for Joinder.
`Sony and LG represent in the Motion that the petitioners in IPR2015-00163
`have no objection to the requested joinder. See Mot. 7.
`For the reasons set forth below, we conclude that Sony and LG have
`shown that the Petition warrants institution of inter partes review of
`claims 4–6, 11, 12, and 19–24 of the ’121 patent. This conclusion is
`
`
`1 We note that the one-year time bar of 35 U.S.C. § 315(b) and 37 C.F.R.
`§ 42.101(b) does not apply to Sony and LG’s request for joinder with
`IPR2015-00163. See Mot. 3; 35 U.S.C. § 315(b) (“The time limitation set
`forth in the preceding sentence shall not apply to a request for joinder under
`subsection (c).”); 37 C.F.R. §§ 42.101(b), 42.122(b) (“The time period set
`forth in § 42.101(b) shall not apply when the petition is accompanied by a
`request for joinder.”).
`
`2
`
`
`
`
`
`
`
`IPR2015-01353
`Patent 7,296,121 B2
`
`
`consistent with our institution decision in IPR2015-00163 (as modified on
`rehearing). See Paper 22, 6. We exercise our discretion to join Sony and
`LG as petitioners in IPR2015-00163.
`I. BACKGROUND
`Sony and LG indicate that Patent Owner has asserted the ’121 patent
`
`in numerous cases filed in the U.S. District Court for the District of
`Delaware. Pet. 2–3. In addition, the ’121 patent is the subject of pending
`inter partes review proceedings, including IPR2015-00163 as well as
`IPR2015-00158 and IPR2015-00159. Id. at 3. The ’121 patent also was the
`subject of IPR2015-00161 and IPR2015-00172, in which inter partes review
`was not instituted. Id.
`
`In IPR2015-00163, filed by Apple Inc., HTC Corporation,
`HTC America, Inc., Samsung Electronics Co. Ltd., Samsung Electronics
`America, Inc., and Amazon.com, Inc. (collectively, “IPR2015-00163
`Petitioners”), we instituted inter partes review of claims 4–6, 11, 12, and
`19–24 of the ’121 patent on the grounds of unpatentability asserted in the
`present Petition. Apple Inc. v. Memory Integrity, LLC, Case IPR2015-00163
`(PTAB May 8, 2015) (Paper 18) (“IPR2015-00163 Inst. Dec.”); IPR2015-
`00163 Paper 22 (“IPR2015-00163 Reh’g Dec.”).
`
`II. PETITION FOR INTER PARTES REVIEW
`In the Petition, Sony and LG assert the same grounds of
`
`unpatentability on which we instituted review in IPR2015-00163 (Pet. 5):
`Ground
`References
`Challenged Claims
`Koster2
`§ 102
`4–6, 11, and 12
`
`2 U.S. Patent No. 7,698,509 B1 (Ex. 1009) (“Koster”).
`3
`
`
`
`
`
`IPR2015-01353
`Patent 7,296,121 B2
`
`
`Ground
`§ 103
`
`References
`Koster and Smith3
`
`
`
`Challenged Claims
`19–24
`
`
`
`Sony and LG support these assertions with the same arguments and evidence
`proffered by the IPR2015-00163 Petitioners, including a substantively
`identical Declaration of Dr. Horst. Compare Pet. 5–42, with IPR2015-
`00163, Paper 1 (“IPR2015-00163 Pet.”), 4–38, 51–56; compare Ex. 1014,
`with IPR2015-00163, Ex. 1014.
`We incorporate our analysis from our institution decision and
`rehearing decision in IPR2015-00163. IPR2015-00163 Inst. Dec. 3–24, 26–
`27; IPR2015-00163 Reh’g Dec. 2–6. For the same reasons, we determine
`that Sony and LG have demonstrated that the present Petition warrants
`institution of inter partes review on the asserted grounds that claims 4–6, 11,
`and 12 of the ’121 patent are anticipated by Koster and that claims 19–24 of
`the ’121 patent would have been obvious over Koster and Smith. IPR2015-
`00163 Inst. Dec. 3–24, 26–27; IPR2015-00163 Reh’g Dec. 2–6.
`
`III. MOTION FOR JOINDER
`In the Motion for Joinder, Sony and LG seek to be joined “as a party”
`
`to IPR2015-00163. Mot. 7. Sony and LG filed the present Motion on
`June 8, 2015, within one month of our decision instituting inter partes
`review in IPR2015-00163, which issued on May 8, 2015. See IPR2015-
`00163 Inst. Dec.; Mot. Therefore, the Motion is timely under 37 C.F.R.
`§ 42.122(b). See 37 C.F.R. § 42.122(b) (“Any request for joinder must be
`
`
`3 MICHAEL JOHN SEBASTIAN SMITH, APPLICATION-SPECIFIC INTEGRATED
`CIRCUITS (1997) (Ex. 1008) (“Smith”).
`4
`
`
`
`
`
`
`
`IPR2015-01353
`Patent 7,296,121 B2
`
`
`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 Board, acting on behalf of the Director, has the discretion to join
`a party to a pending inter partes review where the conditions of 35 U.S.C.
`§ 315(c) are met. See 35 U.S.C. § 315(c); see also 37 C.F.R. § 42.4(a) (“The
`Board institutes the trial on behalf of the Director.”). Specifically, 35 U.S.C.
`§ 315(c) provides:
`If the Director institutes an inter partes review, the Director, in
`his or her discretion, may join as a party to that inter partes
`review any person who properly files a petition under
`section 311 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the time for
`filing such a response, determines warrants the institution of an
`inter partes review under section 314.
`As noted above, we have instituted inter partes review of claims 4–6,
`11, 12, and 19–24 of the ’121 patent in IPR2015-00163. See generally
`IPR2015-00163 Reh’g Dec. In addition, we determine above that Sony and
`LG properly filed a Petition that warrants institution of inter partes review
`of the same claims. Accordingly, the conditions of 35 U.S.C. § 315(c) are
`satisfied, and we must consider whether to exercise our discretion to join
`Sony and LG as petitioners in IPR2015-00163.
`We agree with Sony and LG that joinder would not impact the
`substantive issues presented in IPR2015-00163. The grounds asserted in
`Sony and LG’s Petition that we determine above warrant institution of inter
`partes review are identical to the grounds on which we instituted review in
`IPR2015-00163—relying on the same prior art, same arguments, and same
`evidence, including the same expert and a substantively identical
`
`5
`
`
`
`
`
`
`
`IPR2015-01353
`Patent 7,296,121 B2
`
`
`declaration. See Mot. 4–5; see generally Pet.; IPR2015-00163 Inst. Dec.;
`IPR2015-00163 Reh’g Dec.; IPR2015-00163 Pet. 4–38, 51–56.
`In addition, based on Sony and LG’s requested “understudy” role in
`IPR2015-00163 and representations related to scheduling and discovery, we
`are persuaded that joinder would have minimal impact on the procedural
`aspects of IPR2015-00163. See Mot. 5–7. First, Sony and LG “explicitly
`consent” to the existing schedule in IPR2015-00163. Id. at 5. Moreover, we
`agree with Sony and LG that because the asserted grounds that we determine
`above warrant institution of review and the instituted grounds in IPR2015-
`00163 are the same—including the same supporting prior art, arguments,
`evidence, and expert—joinder should not necessitate any additional briefing
`or discovery from Patent Owner beyond that already required in IPR2015-
`00163. Id. Therefore, we are persuaded that joinder would not require any
`adjustment to or delay in the existing schedule of IPR2015-00163, and
`would not prevent the trial in IPR2015-00163 from being completed within
`one year of institution.
`Second, Sony and LG “explicitly agree to take an ‘understudy’ role”
`in briefing and discovery in IPR2015-00163. Id. at 6. Specifically, Sony
`and LG agree that:
`(a) all filings by [Sony and LG] in the joined proceeding be
`consolidated with
`[the
`filings of
`the
`[IPR2015-00163
`Petitioners]], unless a filing solely concerns issues that do not
`involve [the IPR2015-00163 Petitioners]; (b) [Sony and LG]
`shall not be permitted to raise any new grounds not already
`instituted by the Board in . . . [IPR2015-00163], or introduce
`any argument or discovery not already introduced by [the
`IPR2015-00163 Petitioners]; (c) [Sony and LG] shall be bound
`by any agreement between [Patent Owner] and [the IPR2015-
`
`6
`
`
`
`
`
`IPR2015-01353
`Patent 7,296,121 B2
`
`
`
`
`
`00163 Petitioners] concerning discovery and/or depositions;
`and (d) [Sony and LG] at deposition shall not receive any
`direct, cross-examination or redirect time beyond that permitted
`for [the IPR2015-00163 Petitioners] alone under either
`37 C.F.R. § 42.53 or any agreement between [Patent Owner]
`and [the IPR2015-00163 Petitioners].
`Id. Sony and LG assert that their “accept[ance of] an ‘understudy’ role” will
`“avoid any duplication of effort by the Board or . . . Patent Owner.” Id. at 7.
`Moreover, Sony and LG represent that they will assume the “primary role
`only if” the IPR2015-00163 Petitioners “cease to participate” in IPR2015-
`00163. Id.
`In light of Sony and LG’s representations regarding their requested
`understudy role in IPR2015-00163, we conclude they have demonstrated
`that joinder would not unduly complicate or delay IPR2015-00163. We,
`likewise, are persuaded that joinder would increase efficiency by eliminating
`duplicative filings and discovery, and would reduce costs and burdens on the
`parties as well as the Board.
`For the foregoing reasons, Sony and LG have met their burden to
`demonstrate that joinder with IPR2015-00163 is warranted under the
`circumstances. Accordingly, we exercise our discretion to join Sony and LG
`as petitioners in IPR2015-00163.
`As petitioners in IPR2015-00163, Sony and LG shall adhere to the
`existing schedule of IPR2015-00163 and the understudy role they have
`agreed to assume. More specifically, all filings by Sony and LG in
`IPR2015-00163 shall be consolidated with the filings of the other IPR2015-
`00163 Petitioners, unless the filing involves an issue unique to Sony or LG
`or states a point of disagreement related to the consolidated filing. In such
`
`7
`
`
`
`
`
`
`
`IPR2015-01353
`Patent 7,296,121 B2
`
`
`circumstances, Sony and LG may make a separate filing of no more than
`five pages, without prior authorization of the Board. The page limits set
`forth in 37 C.F.R. § 42.24 will apply to all consolidated filings.
`Sony and LG are bound by any discovery agreements, including
`deposition arrangements, between Patent Owner and the IPR2015-00163
`Petitioners and shall not seek any discovery beyond that sought by the
`IPR2015-00163 Petitioners. Patent Owner shall not be required to provide
`any additional discovery or deposition time as a result of joinder. The
`IPR2015-00163 Petitioners, Sony, and LG shall collectively designate
`attorneys to conduct the cross-examination of any witness produced by
`Patent Owner and the redirect examination of any other witness, within the
`timeframes set forth in 37 C.F.R. § 42.53(c) or agreed to by Patent Owner
`and the IPR2015-00163 Petitioners. No individual petitioner will receive
`any additional cross-examination or redirect examination time. Moreover, if
`an oral hearing is requested and scheduled, the IPR2015-00163 Petitioners,
`Sony, and LG shall collectively designate attorneys to present at the oral
`hearing in a consolidated argument.
`The Board expects Sony and LG to resolve any disputes between
`them and the IPR2015-00163 Petitioners and to contact the Board only if
`such matters cannot be resolved.
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that Sony and LG’s Motion for Joinder with IPR2015-
`00163 is granted;
`
`8
`
`
`
`
`
`IPR2015-01353
`Patent 7,296,121 B2
`
`
`
`
`
`FURTHER ORDERED that Sony Corp., Sony Electronics Inc., Sony
`Mobile Communications AB, Sony Mobile Communications (USA) Inc.,
`LG Electronics, Inc., LG Electronics USA, Inc., and LG Electronics
`Mobilecomm USA, Inc. are joined as petitioners in IPR2015-00163;
`FURTHER ORDERED that, pursuant to 37 C.F.R. § 42.71, the
`Petition is dismissed;
`FURTHER ORDERED that the instant proceeding, IPR2015-01353,
`is terminated under 37 C.F.R. § 42.72, and all further filings shall be made
`only in IPR2015-00163;
`FURTHER ORDERED that the asserted grounds of unpatentability on
`which a trial was instituted in IPR2015-00163 are unchanged;
`FURTHER ORDERED that the Scheduling Order for IPR2015-00163
`(Paper 19), as modified by order of the Board (Paper 23) and stipulation of
`the parties (Paper 21), shall continue to govern IPR2015-00163;
`FURTHER ORDERED that all filings by Sony and LG in IPR2015-
`00163 shall be consolidated with the filings of the other petitioners, unless
`the filing involves an issue unique to Sony or LG or a point of disagreement
`related to the consolidated filing, and the consolidated filings shall comply
`with the page limits set forth in 37 C.F.R. § 42.24;
`FURTHER ORDERED that any separate filing by Sony or LG in
`IPR2015-00163 must not exceed five pages, without prior authorization of
`the Board;
`FURTHER ORDERED that Sony and LG are bound by any discovery
`agreements between Patent Owner and the other petitioners in IPR2015-
`
`9
`
`
`
`
`
`
`
`IPR2015-01353
`Patent 7,296,121 B2
`
`
`00163 and that Sony and LG shall not seek any discovery beyond that
`sought by the other petitioners in IPR2015-00163;
`FURTHER ORDERED that all petitioners in IPR2015-00163 shall
`collectively designate attorneys to conduct the cross-examination of any
`witness produced by Patent Owner and the redirect examination of any other
`witness, within the timeframes set forth in 37 C.F.R. § 42.53(c) or agreed to
`by the parties;
`FURTHER ORDERED that all petitioners in IPR2015-00163 shall
`collectively designate attorneys to present at the oral hearing, if requested
`and scheduled, in a consolidated argument;
`FURTHER ORDERED that the case caption in IPR2015-00163 shall
`be changed to reflect the joinder of Sony and LG as petitioners in
`accordance with the attached example; and
`FURTHER ORDERED that a copy of this Decision be entered into
`the file of IPR2015-00163.
`
`
`
`
`10
`
`
`
`
`
`
`
`
`
`
`
`IPR2015-01353
`Patent 7,296,121 B2
`
`For PETITIONER:
`Sony:
`Lewis V. Popovski
`Zaed M. Billah
`Michael E. Sander
`KENYON & KENYON LLP
`lpopovski@kenyon.com
`zbillah@kenyon.com
`msander@kenyon.com
`MemoryIntegrityv.Sony10760-225@kenyon.com
`
`LG:
`Henry Petri
`Sunwoo Lee
`Ryan Murphy
`Jay Guiliano
`NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
`henry.petri@novakdruce.com
`sunwoo.lee@novakdruce.com
`ryan.murphy@novakdruce.com
`jay.guiliano@novakdruce.com
`
`
`
`For PATENT OWNER:
`
`Jonathan D. Baker
`Gurtej Singh
`FARNEY DANIELS PC
`jbaker@farneydaniels.com
`tsingh@farneydaniels.com
`MemoryIntegrityIPR@farneydaniels.com
`
`
`
`11
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., HTC CORPORATION, HTC AMERICA, INC.,
`SAMSUNG ELECTRONICS CO. LTD,
`SAMSUNG ELECTRONICS AMERICA, INC., AMAZON.COM, INC.,
`SONY CORP., SONY ELECTRONICS INC.,
`SONY MOBILE COMMUNICATIONS AB,
`SONY MOBILE COMMUNICATIONS (USA) INC.,
`LG ELECTRONICS, INC., LG ELECTRONICS USA, INC., and
`LG ELECTRONICS MOBILECOMM USA, INC.,
`Petitioner,
`
`v.
`
`MEMORY INTEGRITY, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-001631
`Patent 7,296,121 B2
`____________
`
`
`
`
`
`
`
`
`1 Sony Corp., Sony Electronics Inc., Sony Mobile Communications AB,
`Sony Mobile Communications (USA) Inc., LG Electronics, Inc.,
`LG Electronics USA, Inc., and LG Electronics Mobilecomm USA, Inc., who
`filed a Petition in IPR2015-01353, have been joined as petitioners in the
`instant proceeding.
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