Trials@uspto.gov
`571-272-7822
`
`
`Paper 12
`Entered: June 9, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`FASTVDO LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00683
`Patent 5,850,482
`____________
`
`
`Before KARL D. EASTHOM, JEFFREY S. SMITH, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`DECISION
`Granting Joinder; Terminating Inter Partes Proceeding
`37 C.F.R. §§ 42.108, 42.122
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 12
`Entered: June 9, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`FASTVDO LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00683
`Patent 5,850,482
`____________
`
`
`Before KARL D. EASTHOM, JEFFREY S. SMITH, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`DECISION
`Granting Joinder; Terminating Inter Partes Proceeding
`37 C.F.R. §§ 42.108, 42.122
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-00683
`Patent 5,850,482
`
`
`I. INTRODUCTION
`
`Petitioner LG Electronics, Inc. (“LGE”) filed a Petition for inter
`
`partes review of claims 1–3, 5–14, 16, 17, 22–26, 28, and 29 of U.S. Patent
`
`No. 5,850,482 (Ex. 1001, “the ’482 patent”). Paper 2 (“Petition”).
`
`Petitioner also filed a Motion for joinder with Apple, Inc. v. FastVDO LLC,
`
`IPR2016-01203. Paper 4 (“Motion”). Patent Owner filed an Opposition to
`
`the Motion for joinder. Paper 10 (“Opposition”). Petitioner filed a Reply to
`
`the Opposition. Paper 11 (“Reply”).
`
`Upon consideration of the Petition, Motion, Opposition, and Reply,
`
`we grant the Motion for joinder.
`
`II. JOINDER
`
`A party may be joined to an inter partes review, subject to the
`
`provisions of 35 U.S.C. § 315(c), which governs joinder of inter partes
`
`review proceedings:
`
`(c) JOINDER.—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 the moving party, LGE bears the burden of proving that it is
`
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`
`should (1) set forth the reasons joinder is appropriate; (2) identify any new
`
`grounds of unpatentability asserted in the petition; and (3) explain what
`
`impact (if any) joinder would have on the trial schedule for the existing
`
`2
`
`
`
`IPR2017-00683
`Patent 5,850,482
`
`review. Kyocera Corp. v. Softview LLC, Case IPR2013-00004, slip. op. at 4
`
`(PTAB April 24, 2013) (Paper 15).
`
`LGE filed its Motion on January 13, 2017. Paper 4. The Board
`
`instituted inter partes review in IPR2016-01203 on December 16, 2017.
`
`IPR2016-01203, Paper 14. Accordingly, the filing date of the Motion for
`
`Joinder satisfies the joinder filing requirement, as set forth in 37 C.F.R.
`
`§ 42.122. See id. (“Any request for joinder must be filed . . . no later than
`
`one month after the institution date of any inter partes review for which
`
`joinder is requested”). The Petition asserts the same grounds as those on
`
`which the Board instituted review in IPR2016-01203. Compare Pet. 19–66
`
`with IPR2016-01203 at 44 (Paper 14); see also Motion 1 (“LGE’s Petition in
`
`all material respects presents the same grounds as the petition in [IPR2016-
`
`01203] – no new arguments, no new claims and no new grounds of
`
`unpatentability are added by LGE’s Petition.”)
`
`
`
`The Board instituted a trial in IPR2016-01203 on the following
`
`grounds:
`
`Reference(s)
`
`Kato1
`
`Basis
`
`§ 103
`
`Fiala,2 Fazel,3 and Fazel ’6224
`
`§ 103
`
`Challenged Claims
`
`1–3, 5–14, 16, 17, 22–26,
`28, and 29
`1–3, 5–14, 16, 17, 22–26,
`28, and 29
`
`
`1 US 5,392,037, Feb. 21, 1995.
`2 Fiala et al., Data Compression with Finite Windows, Communications of
`the ACM, Vol. 32, No. 4, 490–505 (1989).
`3 Fazel et al., Application of Unequal Error Protection Codes on Combined
`Source-Channel Coding of Images, International Conference on
`Communications, Including SuperComm Technical Sessions (IEEE),
`Atlanta, Vol. 3, 898–903 (April 15–19, 1990).
`4 US 5,218,622, June 8, 1993.
`
`3
`
`
`
`IPR2017-00683
`Patent 5,850,482
`
`IPR2016-01203, Paper 14 at 44.
`
`In its Motion, LGE agreed to take an understudy role to Petitioner
`
`Apple, Inc. (“Apple”), and agreed to adhere to the existing trial schedule in
`
`IPR2016-01203. Motion 8. LGE also demonstrates sufficiently that joinder
`
`will promote efficiency. See Motion 1–3.
`
`In its Opposition, Patent Owner contends that the Motion (1) does not
`
`limit Petitioner’s right to submit its own filing on the condition that Apple
`
`settles with Patent Owner or is otherwise terminated; (2) does not require
`
`Petitioner to seek authorization from the Board to file a separate paper, and
`
`only where the filing involves an issue unique to Petitioner or states a point
`
`of disagreement related to the consolidated filing; (3) does not preclude
`
`Petitioner from using its own expert in support of future filings; and (4) does
`
`not restrict Petitioner’s right to seek additional time for depositions or oral
`
`argument. Opp. 2–5. In Reply, Petitioner states that it has no objection to
`
`seeking permission of the Board before filing an alternative pleading.
`
`Reply. Petitioner also states that it will submit to whatever procedures the
`
`Board requires. Id.
`
`Given the following: 1) the challenges in the instant Petition are
`
`identical to the grounds instituted in IPR2016-01203; 2) joinder will not
`
`impact the existing trial schedule in IPR2016-01203; and 3) joinder will
`
`promote efficiency, we determine the Petition warrants institution on the
`
`same grounds as those on which the Board instituted inter partes review in
`
`IPR2016-01203 and join LGE to IPR2016-01203.
`
`After considering Patent Owner’s Opposition and Petitioner’s Reply,
`
`we limit Petitioner’s right to submit its own filing on the condition that
`
`Apple settles with Patent Owner or is otherwise terminated; we require
`
`4
`
`
`
`IPR2017-00683
`Patent 5,850,482
`
`Petitioner to seek authorization from the Board to file a separate paper, and
`
`only where the filing involves an issue unique to Petitioner or states a point
`
`of disagreement related to the consolidated filing; we preclude Petitioner
`
`from using its own expert in support of future filings; we preclude Petitioner
`
`from seeking additional time for depositions or oral argument; and we bind
`
`Petitioner to the Scheduling Order already of record in IPR2016-01203.
`
`LGE is bound by any discovery agreements, including any deposition
`
`arrangements, between Patent Owner and Apple in IPR2016-01203, and
`
`LGE shall not seek any discovery beyond that sought by Apple. Patent
`
`Owner shall not be required to provide any additional discovery or
`
`deposition time as a result of the joinder. Apple in the joined proceeding
`
`shall designate attorney(s) to conduct the collective cross-examination of
`
`any witness produced by Patent Owner and the collective redirect
`
`examination of any other witness within the timeframes set forth in 37
`
`C.F.R. § 42.53(c) or as otherwise agreed by Patent Owner and Apple. No
`
`individual party will receive any additional cross-examination or redirect
`
`examination time. Moreover, if an oral hearing is requested and scheduled,
`
`Apple in the joined proceeding shall designate attorney(s) to present a
`
`consolidated argument at the oral hearing.
`
`The Board expects LGE, Apple, and Patent Owner to meet and confer
`
`regarding any disputes between them and to contact the Board only if such
`
`matters cannot be resolved.
`
`Under these circumstances, it is likely that joining Petitioner as a party
`
`to IPR2016-01203 will not unduly delay or detrimentally affect IPR2016-
`
`01203. We exercise our discretion to join the instant proceeding to
`
`IPR2016-01203. Accordingly, the Motion is granted.
`
`5
`
`
`
`IPR2017-00683
`Patent 5,850,482
`
`
`III. ORDER
`
`It is
`
`ORDERED that LGE’s Motion for Joinder is granted;
`
`FURTHER ORDERED that IPR2016-00683 is instituted and LGE is
`
`
`
`
`
`
`
`joined with IPR2016-01203;
`
`
`
`FURTHER ORDERED that the grounds on which IPR2016-01203
`
`were instituted remain unchanged and no other grounds are included in the
`
`joined proceeding;
`
`
`
`FURTHER ORDERED that the Order (Paper 9) and Stipulated
`
`Schedule (Paper 22) in IPR2016-01203 shall govern the trial schedule of the
`
`joined proceeding;
`
`
`
`FURTHER ORDERED that, throughout the joined proceeding, Apple
`
`shall file all papers as a single, consolidated filing;
`
`
`
`FURTHER ORDERED that LGE is bound by any discovery
`
`agreements between Patent Owner and Apple in IPR2016-01203 and that
`
`LGE shall not seek any discovery beyond that sought by Apple;
`
`
`
`FURTHER ORDERED that Apple in the joined proceeding shall
`
`designate attorney(s) to conduct collective cross-examination, redirect
`
`examination, and any other discovery within the timeframes set forth by the
`
`rules, including 37 C.F.R. § 42.53(c), or as the parties otherwise agree upon;
`
`
`
`FURTHER ORDERED that Apple in the joined proceeding shall
`
`designate attorney(s) to present argument at the oral hearing, if requested
`
`and scheduled, in a consolidated argument;
`
`
`
`FURTHER ORDERED that IPR2017-00683 is terminated under
`
`37 C.F.R. § 42.72 and all further filings in the joined proceedings will be in
`
`IPR2016-01203;
`
`6
`
`
`
`IPR2017-00683
`Patent 5,850,482
`
`
`
`FURTHER ORDERED that a copy of this Decision will be entered
`
`into the record of IPR2016-01203; and
`
`
`
`FURTHER ORDERED that the case caption in IPR2016-01203 shall
`
`be changed to reflect joinder of the instant proceeding in accordance with
`
`the attached example.
`
`
`
`7
`
`
`
`8
`
`IPR2017-00683
`Patent 5,850,482
`
`
`
`PETITIONER:
`
`David Makous
`dmakous@lhlaw.com
`
`
`
`DAVID L. FERRMAN
`MARTIN M. NOONEN
`dferman@mofo.com
`10684-FastVDO-IPR@mofo.com
`
`
`
`PATENT OWNER:
`
`Neil Rubin
`
`nrubin@raklaw.com
`
`Wayne Helge
`whelge@dbjg.com
`
`Amir Naini
`anaini@raklaw.com
`
`Walter Davis
`wdavis@davidsonberquist.com
`
`
`
`
`
`IPR2017-00683
`Patent 5,850,482
`
`
`
`Example Case Caption for Joined Proceeding
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`APPLE, INC., and
`LG ELECTRONICS, INC.,
`Petitioners,
`
`
`v.
`
`
`
`FASTVDO LLC,
`Patent Owner.
`
`____________
`
`
`
`Case IPR2016-012035
`Patent 5,850,482
`____________
`
`
`
`
`
`
`
`
`5 LG Electronics, Inc. filed a petition in (now terminated) IPR2017-00683
`and has been joined to the instant proceeding.
`
`10
`
`
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