Paper No. 12
`Trials@uspto.gov
`571-272-7822
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` Filed: September 29, 2015
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`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 IPR2015-01376
`Patent 7,296,121 B2
`____________
`
`
`
`
`Before JENNIFER S. BISK, NEIL T. POWELL, and KERRY BEGLEY,
`Administrative Patent Judges.
`
`
`BEGLEY, 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
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`
`
`
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`Trials@uspto.gov
`571-272-7822
`
` Filed: September 29, 2015
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`
`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 IPR2015-01376
`Patent 7,296,121 B2
`____________
`
`
`
`
`Before JENNIFER S. BISK, NEIL T. POWELL, and KERRY BEGLEY,
`Administrative Patent Judges.
`
`
`BEGLEY, 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
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`IPR2015-01376
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`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 1–3, 8, 11, 12, and 15–25 of U.S. Patent No.
`7,296,121 B2 (Ex. 1001, “the ’121 patent”). Paper 3 (“Pet.”). Along with
`the Petition, Sony and LG filed a motion for joinder with IPR2015-00159,
`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 IPR2015-00159. Paper 10. We treat Patent Owner’s
`Preliminary Response in IPR2015-00159 as having been filed in this case.
`See IPR2015-00159, Paper 11 (“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 IPR2015-00159
`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 1–3, 8, 11, and 15–25 of the ’121 patent, but does not warrant
`
`
`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
`IPR2015-00159. 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.”).
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`institution of review of claim 12. This conclusion is consistent with our
`institution decision in IPR2015-00159. We exercise our discretion to join
`Sony and LG as petitioners in IPR2015-00159.
`I. BACKGROUND
`A. RELATED PROCEEDINGS
`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 IPR2015-00159 as well as
`IPR2015-00158 and IPR2015-00163. 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 IPR2015-00159, filed by Apple Inc., HTC Corporation,
`HTC America, Inc., Samsung Electronics Co. Ltd., Samsung Electronics
`America, Inc., and Amazon.com, Inc. (collectively, “IPR2015-00159
`Petitioners”), we instituted inter partes review of claims 1–3, 8, 11, and 15–
`25 of the ’121 patent on the grounds of unpatentability asserted in the
`present Petition. Apple Inc. v. Memory Integrity, LLC, Case IPR2015-00159
`(PTAB May 11, 2015) (Paper 12) (“IPR2015-00159 Inst. Dec.”).
`B. THE ’121 PATENT
`The ’121 patent relates to techniques to reduce memory transaction
`
`traffic and to improve data access and cache coherency in systems with
`multiple processors connected using point-to-point links. Ex. 1001, 1:22–
`25, 2:39–47. The ’121 patent explains that cache coherency problems can
`arise in a system with multiple processors, each with an individual cache
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`memory, because the system may contain multiple copies of the same data.
`Id. at 1:26–38. For example, if the caches of two different processors have a
`copy of the same data block and both processors “attempt to write new
`values into the data block at the same time,” then the two caches may have
`different data values and the system may be “unable to determine what value
`to write through to system memory.” Id. at 1:37–45.
`
`The ’121 patent discloses a computer system with processing nodes,
`each with a cache memory, connected by a point-to-point architecture. Id. at
`[57], 2:48–62. The system also includes a “probe filtering unit” that can
`receive a probe from a processing node. Id. at [57], 2:52–65, 5:45–47. The
`’121 patent defines a probe as “[a] mechanism for eliciting a response from a
`node to maintain cache coherency in a system.” Id. at 5:45–47.
`The probe filtering unit then can evaluate the probe based on probe
`filtering information and transmit the probe to selected processing nodes. Id.
`at [57], 2:52–3:5, 14:50–52; see id. at 28:29–58, 29:43–46. The ’121 patent
`explains that probe filtering information is “[a]ny criterion that can be used
`to reduce the number of clusters or nodes probed.” Id. at 14:50–52.
`The probe filtering unit also may be operable to accumulate responses
`from the selected processing nodes and to respond to the node from which
`the probe originated. Id. at 3:5–8, 28:59–67, 29:46–51. Figure 18 of the
`patent is reproduced below.
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`Figure 18 is a diagrammatic representation of a multiple processor
`system with a probe filtering unit. Id. at 3:61–63, 26:58–27:20, Fig. 18.
`Specifically, Figure 18 depicts multiple processor system 1800 with
`processing nodes 1802a–d interconnected by point-to-point communication
`links 1808a–e. Id. at 26:58–27:1. System 1800 also includes probe filtering
`unit 1830 as well as I/O switch 1810, one or more Basic I/O systems
`(“BIOS”) 1804, I/O adapters 1816, 1820, and a memory subsystem with
`memory banks 1806a–d. Id. at 3:61–63, 26:58–27:20, Fig. 18.
`Claims 1, 16, and 25 of the ’121 patent are independent claims.
`Claim 1 is illustrative of the claimed subject matter and recites:
`1. A computer system comprising a plurality of processing
`nodes interconnected by a first point-to-point architecture,
`each processing node having a cache memory associated
`therewith,
`the computer system further comprising a probe filtering unit
`which is operable to receive probes corresponding to memory
`lines from the processing nodes and to transmit the probes only
`to selected ones of the processing nodes with reference to probe
`filtering information representative of states associated with
`selected ones of the cache memories.
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`Id. at 30:65–31:7 (line breaks added).
`II. PETITION FOR INTER PARTES REVIEW
`We first consider the merits of the Petition.
`A. ASSERTED PRIOR ART
`The Petition relies upon the following prior art references, as well as
`the supporting Declaration of Robert Horst, Ph.D. (Ex. 1014):
`U.S. Patent Application Publication No. 2002/0053004 A1 (published
`May 2, 2002) (Ex. 1003, “Pong”); and
`
`MICHAEL JOHN SEBASTIAN SMITH, APPLICATION-SPECIFIC INTEGRATED
`CIRCUITS (1997) (Ex. 1008, “Smith”).
`B. ASSERTED GROUNDS OF UNPATENTABILITY
`Sony and LG assert the following grounds of unpatentability. Pet. 5.
`Challenged Claim[s]
`Basis
`Reference[s]
`1–3, 8, 11, 12, 15, 16, and 25 § 102 Pong
`17–24
`§ 103 Pong and Smith
`
`C. CLAIM INTERPRETATION
`The Board interprets claims of an unexpired patent using the
`“broadest reasonable construction in light of the specification of the patent in
`which [they] appear[].” 37 C.F.R. § 42.100(b); see In re Cuozzo Speed
`Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015) (holding that
`“Congress implicitly approved the broadest reasonable interpretation
`standard in enacting the AIA” and that “the standard was properly adopted
`by PTO regulation”). We presume a claim term carries its “ordinary and
`customary meaning,” which is “the meaning that the term would have to a
`person of ordinary skill in the art in question” at the time of the invention.
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (citation
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`and quotations omitted). This presumption, however, is rebutted when the
`patentee acts as lexicographer by giving the term a particular meaning in the
`specification with “reasonable clarity, deliberateness, and precision.” In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`In this case, the parties propose the same claim constructions
`proffered in IPR2015-00159. See Pet. 6–16; IPR2015-00159 Paper 6
`(“IPR2015-00159 Pet.”), 4–15; Prelim. Resp. 10–24; Paper 10. In our
`institution decision in IPR2015-00159, we construed the claim terms
`“probe,” “probe filtering information,” and “states associated with selected
`ones of the cache memories” as well as “after receiving a first number of
`responses to a first probe” “wherein . . . the first number is one” and
`“wherein . . . the first number is two.” IPR2015-00159 Inst. Dec. 5–14. We
`determined that no other claim terms required construction. Id. at 6. We are
`not persuaded that any modification of our claim construction analysis in
`IPR2015-00159 is necessary, and we incorporate that analysis into this
`Decision. Id. at 5–14.
`We include below our analysis from IPR2015-00159 of the claim
`terms “after receiving a first number of responses to a first probe” “wherein
`. . . the first number is one” (claim 12) and “wherein . . . the first number is
`two” (claim 13), which is relevant to our discussion of claim 12 in § II.D.2.
`Claim 11 depends from claim 1 and recites “wherein each of the processing
`nodes is programmed to complete a memory transaction after receiving a
`first number of responses to a first probe, the first number being fewer than
`the number of processing nodes.” Ex. 1001, 31:49–53. Claims 12 and 13
`depend from claim 11. Claim 12 adds the limitation: “wherein . . . the first
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`number is one.” Ex. 1001, 31:57. Claim 13 adds the limitation: “wherein
`. . . the first number is two.” Id. at 31:61–62.
`Like the IPR2015-00159 Petitioners, Sony and LG argue that, under
`the broadest reasonable interpretation, “the requirement of claim 12 that ‘the
`first number is one’ simply imparts a temporal requirement . . . that the
`memory transaction be completed after receiving one response.” Pet. 35–
`36; see IPR2015-00159 Pet. 34. Therefore, according to Sony and LG,
`“even in the case where a requesting processor waits for [a] second response
`to complete the memory transaction, that memory transaction is completed
`after receiving one response” and, thus, falls within the claim language.
`Pet. 35–36; see IPR2015-00159 Pet. 34. As support, Sony and LG cite the
`testimony of Dr. Horst, who similarly opines that “‘after’ can be reasonably
`read to mean any time after receiving one response” and, therefore,
`“claim 12 can be reasonably read to simply impart a temporal requirement
`that each processing node be programmed to wait until receiving at least one
`response to complete a memory transaction.” Ex. 1014 ¶ A-23 (emphases
`added). In other words, Sony and LG propose that even if a processing node
`performs a memory transaction after receiving two, three, four, etc.
`responses, it would still satisfy the claim language “after receiving a first
`number of responses to a first probe” “wherein . . . the first number is one.”
`
`We disagree. Upon review of the claims and the written description
`of the ’121 patent—neither of which is discussed in the Petition or
`Dr. Horst’s testimony—we determine that Sony and LG’s proposed
`interpretation of the claim language is too broad to be reasonable. We
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`decline to interpret “after” as “any time after” and “one” as “at least one,” as
`Sony and LG suggest. Id.
`Sony and LG’s proposed interpretation would render the various
`specific limitations regarding the recited “first number”—“the first number
`being fewer than the number of processing nodes” (claim 11), “the first
`number is one” (claim 12), and “the first number is two” (claim 13)—
`effectively meaningless and nonsensical. See Becton, Dickinson & Co. v.
`Tyco Healthcare Grp., LP, 616 F.3d 1249, 1255 (Fed. Cir. 2010) (holding
`that a claim construction that renders claims nonsensical cannot be correct);
`Cat Tech LLC v. TubeMaster, Inc., 528 F.3d 871, 885 (Fed. Cir. 2008)
`(refusing to adopt a construction that would render a claim limitation
`meaningless). For example, under Sony and LG’s proposed interpretation,
`claim 11’s language, “after receiving a first number of responses to a first
`probe, the first number being fewer than the number of processing nodes,”
`would extend to memory transactions performed “any time after receiving” a
`number of responses fewer than the processing nodes. Ex. 1014 ¶ A-23; see
`Pet. 35–36; IPR2015-00159 Pet. 34. In other words, the limitation would
`cover memory transactions performed after the processing node received any
`number of responses—whether fewer than, equal to, or greater than the
`number of processing nodes. It, therefore, would impose no meaningful
`limitation on the number of responses the requesting processor must be
`programmed to receive before performing a memory transaction.
`
`We also are not persuaded that Sony and LG’s proposed construction
`is consistent with the discussion of programming the processing nodes in the
`’121 patent specification. The ’121 patent refers to programming each node
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`“to expect only one or two probe responses instead of one from each node in
`the system. More specifically, each node is programmed to expect one
`probe response if the [probe filtering unit] contains temporary storage to
`hold dirty data, and two if it does not.” Ex. 1001, 28:16–21; see id. at
`28:21–29:30. This discussion of programming processing nodes to expect a
`specific number of responses (one or two) is not in line with Sony and LG’s
`proposal that claim 12’s limitation—the first number is one—would extend
`to performing a memory transaction any time after receiving one response,
`including after receiving two, three, four, or more responses, and that
`claim 13’s corresponding limitation—the first number is two—similarly
`would extend to performing a transaction after receiving three, four, five, or
`more responses.
`
`In light of the ’121 patent claims and written description, discussed
`above, we determine that “after receiving a first number of responses to a
`first probe” “wherein . . . the first number is one,” as recited in claim 12,
`means after receiving one response—not at least one or more than one
`response, as Sony and LG propose. Similarly, we conclude that the
`language in claim 13, “after receiving a first number of responses to a first
`probe” “wherein . . . the first number is two,” means after receiving two
`responses—not at least two or more than two responses. In other words, if a
`processor performs a memory transaction after receiving two responses, the
`first number is two—not one, as Sony and LG suggest. See Pet. 35–36;
`IPR2015-00159 Pet. 34.
`D. ASSERTED GROUNDS
`1. Grounds Instituted in IPR2015-00159
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`In the Petition, Sony and LG assert the same grounds of
`unpatentability on which we instituted review in IPR2015-00159, with one
`exception outlined in the following section. See Pet. 1 & n.1; IPR2015-
`00159 Inst. Dec. 14–30. Specifically, consistent with IPR2015-00159, Sony
`and LG argue that claims 1–3, 8, 11, 15, 16, and 25 are anticipated by Pong
`and that claims 17–24 would have been obvious over Pong and Smith.
`Pet. 21–50; IPR2015-00159 Inst. Dec. 14–30. Sony and LG support these
`assertions with the same arguments and evidence proffered by the IPR2015-
`00159 Petitioners, including the identical Declaration of Dr. Horst.
`Compare Pet. 21–50, with IPR2015-00159 Pet. 20–44, 55–59; compare
`Ex. 1014, with IPR2015-00159 Ex. 1014.
`We incorporate our analysis of these claims from our institution
`decision in IPR2015-00159. IPR2015-00159 Inst. Dec. 14–23, 28–30. 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 1–3, 8, 11, 15, 16, and 25 of the ’121 patent are
`anticipated by Pong and that claims 17–24 of the ’121 patent would have
`been obvious over Pong and Smith. Id.
`2. Claim 12 – Anticipation by Pong
`In addition, Sony and LG assert that claim 12 of the ’121 patent is
`
`anticipated by Pong. Pet. 33–36. The petition in IPR2015-00159 also
`challenged claim 12 on this asserted ground. IPR2015-00159 Pet. 32–34. In
`IPR2015-00159, we denied institution of inter partes review of claim 12 and
`subsequently denied a request for rehearing of this determination. See
`IPR2015-00159 Inst. Dec. 23–24; IPR2015-00159, Dec. on Req. Reh’g
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`(Paper 18). The Petition supports its challenge of claim 12 with the same
`arguments and evidence as the petition in IPR2015-00159. Compare
`Pet. 33–36, with IPR2015-00159 Pet. 32–34.
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`In the Petition, Sony and LG represent that they include this challenge
`of claim 12 “merely to conform” to the petition and motion for rehearing in
`IPR2015-00159, which was pending before the Board when Sony and LG
`filed the instant Petition. Pet. 1 n.1. Sony and LG further represent that if
`the Board denies the motion for rehearing in IPR2015-00159, Sony and LG
`“request[] that the Board grant joinder on all claims except claim 12 to
`maintain conformance” with IPR2015-00159. Id. at 33 n.5. Therefore, we
`understand Sony and LG to challenge claim 12 only if we grant the motion
`for rehearing and institute review of claim 12 in IPR2015-00159.
`Accordingly, because we have denied rehearing of our determination not to
`institute review of claim 12 in IPR2015-00159, we understand that Sony and
`LG no longer maintain their challenge of this claim.
`
`To the extent that Sony and LG maintain their challenge of claim 12
`as anticipated by Pong, however, we determine that they have not shown
`that the Petition warrants institution of inter partes review of this claim.
`Claim 12 of the ’121 patent depends from claim 11, which, in turn, depends
`from independent claim 1. See Ex. 1001, 30:65–31:7, 31:49–57. Based on
`its dependency from claims 1 and 11, claim 12 recites “a plurality of
`processing nodes” “wherein each of the processing nodes is programmed to
`complete a memory transaction after receiving a first number of responses to
`a first probe.” Id. at 30:65–66, 31:49–54. Claim 12 adds the limitation:
`“and the first number is one.” Id. at 31:56–57.
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`Sony and LG argue in the Petition that Pong discloses this limitation
`of claim 12 even though Pong’s processors may wait to receive more than
`one response before completing a memory transaction. See Pet. 34–36.
`Specifically, the Petition asserts that in one example described in Pong, “the
`requesting processor may receive, at most, two responses.” Id. at 35. The
`Petition then argues that Pong’s processors “necessarily” satisfy the claim
`language because “‘the first number is one’ simply imparts a temporal
`requirement . . . that the memory transaction be completed after receiving
`one response.” Id. at 35–36. In other words, the Petition contends that in
`Pong:
`[t]he requesting processor is . . . programmed to complete a
`memory transaction after receiving at most, two responses to a
`request . . . and, therefore, necessarily is configured to perform
`a memory transaction after receiving one response, since even
`in the case where the requesting processor waits for the second
`response to complete the memory transaction, that memory
`transaction is completed after receiving the first response.
`Id. at 35 (first and second emphases added).
`The Petition’s argument that Pong anticipates claim 12, therefore, is
`premised on the possibility that Pong’s processors may receive more than
`one response to a request before completing a memory transaction. The
`Petition does not argue that Pong’s processors are configured to perform a
`memory transaction after receiving one—as opposed to at least one or more
`than one—response, as required to satisfy claim 12 under the claim
`construction that we adopted in IPR2015-00159 and maintain in this
`Decision. Therefore, the Petition does not make a sufficient showing that
`Pong anticipates claim 12.
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`We acknowledge that one sentence of the Petition features a citation
`to paragraph A-22 of the Dr. Horst Declaration. See id. at 33 (citing
`Ex. 1014 ¶¶ A-19–A-24). In this paragraph, Dr. Horst opines that Pong’s
`processors necessarily must be programmed to complete a memory
`transaction upon receiving one response. Ex. 1014 ¶ A-22. Specifically,
`Dr. Horst testifies:
`Since Pong does not describe that the directory filter ever
`informs the requesting processor of the number of responses it
`should expect to receive, the requesting processor must
`necessarily be configured to complete a memory transaction as
`soon as it receives the first response. Otherwise, the requesting
`processor would have to wait for an unknown number of
`responses to its request.
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`Id.
`To the extent that Sony and LG seek to rely on this opinion of
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`Dr. Horst to support their assertion that Pong anticipates claim 12, this is
`impermissible under our rules. The testimony in paragraph A-22 is cited but
`is not otherwise explained, referenced, or argued in the Petition.
`Incorporating arguments into the Petition by reference to other documents is
`prohibited by 37 C.F.R. § 42.6(a)(3), and we have discretion to “exclude or
`give no weight to . . . evidence” where the Petition “fail[s] to state its
`relevance,” pursuant to 37 C.F.R. § 42.104(b)(5). See 37 C.F.R.
`§§ 42.6(a)(3), 42.104(b)(5).
`
`Even considering paragraph A-22 of Dr. Horst’s testimony, we are not
`persuaded that Pong inherently discloses claim 12. This testimony, opining
`that Pong’s processors “must necessarily be configured to complete a
`memory transaction as soon as it receives the first response,” Ex. 1014
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`¶ A-22 (emphasis added), is contrary to the position Sony and LG take in the
`Petition, which acknowledges “the case where the requesting processor [in
`Pong] waits for the second response to complete the memory transaction,”
`Pet. 35 (emphasis added). Sony and LG do not address or explain the
`apparent inconsistency between these diverging positions. Moreover,
`Dr. Horst’s testimony on this point is conclusory and is insufficient to show
`inherency. See Ex. 1014 ¶ A-22; Prelim Resp. 48–50. The mere fact that
`“Pong does not describe that the directory filter ever informs the requesting
`processor of the number of responses it should expect to receive” is
`insufficient to establish that the requesting processor “must necessarily be
`configured to complete a memory transaction as soon as it receives the first
`response.” Ex. 1014 ¶ A-22. The relevant testimony does not sufficiently
`exclude other possible means of programming processors in Pong—as
`required for inherency. See Akamai Techs., Inc. v. Cable & Wireless
`Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003) (“A claim
`limitation is inherent in the prior art if it is necessarily present in the prior
`art, not merely probably or possibly present.”).
`
`In conclusion, for the reasons given above, we understand that Sony
`and LG no longer maintain their challenge to claim 12 of the ’121 patent and
`to the extent that they do, they have not shown sufficiently that the Petition
`warrants institution of inter partes review of claim 12.
`E. CONCLUSION
`For the foregoing reasons, we determine that Sony and LG have
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`demonstrated that the Petition warrants institution of inter partes review of
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`claims 1–3, 8, 11, and 15–25 of the ’121 patent. We conclude, however, that
`institution of review of claim 12 is not warranted based on the Petition.
`III. MOTION FOR JOINDER
`In the Motion for Joinder, Sony and LG seek to be joined “as a party”
`
`to IPR2015-00159. Mot. 7. Sony and LG filed the present Motion on
`June 11, 2015, within one month of our decision instituting inter partes
`review in IPR2015-00159, which issued on May 11, 2015. See IPR2015-
`00159 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
`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 1–3,
`8, 11, and 15–25 of the ’121 patent in IPR2015-00159. See generally
`IPR2015-00159 Inst. Dec. In addition, we determine above that Sony and
`LG properly filed a Petition that warrants institution of inter partes review
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`IPR2015-01376
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`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 IPR2015-00159.
`We agree with Sony and LG that joinder would not impact the
`substantive issues presented in IPR2015-00159. 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
`IPR2015-00159—relying on the same prior art, same arguments, and same
`evidence, including the same supporting expert declaration. See Mot. 4–5;
`see generally Pet.; IPR2015-00159 Inst. Dec.; IPR2015-00159 Pet. 4–44,
`55–59.
`In addition, based on Sony and LG’s requested “understudy” role in
`IPR2015-00159 and representations related to scheduling and discovery, we
`are persuaded that joinder would have minimal impact on the procedural
`aspects of IPR2015-00159. See Mot. 5–7. First, Sony and LG “explicitly
`consent” to the existing schedule in IPR2015-00159. 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-
`00159 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-
`00159. Id. Therefore, we are persuaded that joinder would not require any
`adjustment to or delay in the existing schedule of IPR2015-00159, and
`would not prevent the trial in IPR2015-00159 from being completed within
`one year of institution.
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`Second, Sony and LG “explicitly agree to take an ‘understudy’ role”
`in briefing and discovery in IPR2015-00159. 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 [IPR2015-00159
`Petitioners]], unless a filing solely concerns issues that do not
`involve [the IPR2015-00159 Petitioners]; (b) [Sony and LG]
`shall not be permitted to raise any new grounds not already
`instituted by the Board in [IPR2015-00159], or introduce any
`argument or discovery not already introduced by [the IPR2015-
`00159 Petitioners]; (c) [Sony and LG] shall be bound by any
`agreement between [Patent Owner] and [the IPR2015-00159
`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 IPR2015-00159 Petitioners] alone under either 37 C.F.R.
`§ 42.53 or any agreement between [Patent Owner] and [the
`IPR2015-00159 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 IPR2015-00159 Petitioners “cease to participate” in IPR2015-
`00159. Id.
`In light of Sony and LG’s representations regarding their requested
`understudy role in IPR2015-00159, we conclude they have demonstrated
`that joinder would not unduly complicate or delay IPR2015-00159. 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.
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`For the foregoing reasons, Sony and LG have met their burden to
`demonstrate that joinder with IPR2015-00159 is warranted under the
`circumstances. Accordingly, we exercise our discretion to join Sony and LG
`as petitioners in IPR2015-00159.
`As petitioners in IPR2015-00159, Sony and LG shall adhere to the
`existing schedule of IPR2015-00159 and the understudy role they have
`agreed to assume. More specifically, all filings by Sony and LG in
`IPR2015-00159 shall be consolidated with the filings of the other IPR2015-
`00159 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
`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 IPR2015-00159
`Petitioners and shall not seek any discovery beyond that sought by the
`IPR2015-00159 Petitioners. Patent Owner shall not be required to provide
`any additional discovery or deposition time as a result of joinder. The
`IPR2015-00159 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 IPR2015-00159 Petitioners. No individual petitioner will receive
`any additional cross-examination or redirect examination time. Moreover, if
`an oral hearing is requested and scheduled, the IPR2015-00159 Petitioners,
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`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 IPR2015-00159 Petitioners and to contact the Board only if
`such matters cannot be resolved.
`IV. ORDER
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`Accordingly, it is:
`ORDERED that Sony and LG’s Motion for Joinder with IPR2015
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