`Tel: 571-272-7822
`
`
`
`Paper 9
` Entered: May 19, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`_______________
`
`Case IPR2017-00678
`Patent 8,504,746 B2
`_______________
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`QUINN, 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)
`
`
`
`IPR2017-00678
`Patent 8,504,746 B2
`
`
`I.
`
`INTRODUCTION
`
`LG Electronics, Inc.1 (“Petitioner” or “LG”) filed a Petition requesting
`
`an inter partes review of claims 112, 14, 15, 1721, 2331, 34, and 35 of
`
`U.S. Patent No. 8,504,746 B2 (“the ’746 patent”) pursuant to 35 U.S.C.
`
`§ 311319. Paper 1 (“Pet.”). Petitioner also concurrently filed a Motion for
`
`Joinder. Paper 3 (“Mot.”). The Motion for Joinder seeks to join this
`
`proceeding with Canon Inc. et al., v. Papst Licensing GmbH & Co., KG,
`
`Case IPR2016-01211 (“the Canon IPR”). Mot. 5. Patent Owner did not file
`
`a Preliminary Response, but filed a Response to Petitioner’s Motion for
`
`Joinder in which Patent Owner states that it does not oppose Petitioner’s
`
`request for joinder. Paper 8. For the reasons described below, we institute
`
`an inter partes review of claims 112, 15, 1721, 2331, 34, and 35 of the
`
`’746 patent, and grant Petitioner’s Motion for Joinder.
`
`II.
`
`INSTITUTION OF INTER PARTES REVIEW
`
`On December 15, 2016, we instituted a trial in IPR2016-01211 on the
`
`following alleged grounds of unpatentability based on obviousness:
`
`Reference(s)
`Kawaguchi, and Matsumoto
`
`Kawaguchi, Matsumoto, and
`DASM-AD14
`Kawaguchi, Matsumoto, and
`Saito
`Kawaguchi, Matsumoto, Saito,
`and Muramatsu,
`
`
`Basis
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`Claim(s)
`112, 15, 1719, 26,
`2931, 34, and 35
`21, 24, 25, 27, and 28
`
`20
`
`23
`
`
`1 Real parties-in-interest of Petitioner are LG Electronics U.S.A., Inc. and
`LG Electronics Mobilecomm U.S.A., Inc. Pet. 64.
`
`
`
`2
`
`
`
`IPR2017-00678
`Patent 8,504,746 B2
`
`Canon IPR, slip. op. at 20 (PTAB Dec. 15, 2016) (Paper 11). The instant
`
`Petition presents the same grounds of unpatentability, the same prior art, and
`
`the same declarant testimony as the petition in the Canon IPR. Pet. 57,
`
`Mot. 6. In view of the identity of the grounds in the instant Petition and in
`
`the Canon IPR petition, and for the same reasons stated in our Decision on
`
`Institution in the Canon IPR, we institute inter partes review in this
`
`proceeding on the same grounds discussed above and for the claims we
`
`instituted inter partes review in the Canon IPR.
`
`III. GRANT OF MOTION FOR JOINDER
`
`Joinder in inter partes review is subject to the provisions of 35 U.S.C.
`
`§ 315(c):
`
`(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
`parties review under section 314.
`
`As the moving party, Petitioner 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
`
`review. See Frequently Asked Question H5,
`
`http://www.uspto.gov/patentsapplication-process/appealing-
`
`patentdecisions/trials/patent-reviewprocessing-system-prps-0.
`
`Petitioner asserts it has grounds for standing because, in accordance
`
`with 35 U.S.C. § 315(c), Petitioner filed a motion for joinder concurrently
`
`
`
`3
`
`
`
`IPR2017-00678
`Patent 8,504,746 B2
`
`with the Petition and not later than one month after institution of the Canon
`
`IPR. Mot. 5. Patent Owner does not oppose Petitioner’s motion for joinder
`
`based on condition that the instant proceeding follows the same schedule as
`
`the Canon IPR. Paper 8. We find that the Motion is timely.
`
`
`
`We also find that Petitioner has met its burden of showing that joinder
`
`is appropriate. The Petition here is substantively identical to the petition in
`
`the Canon IPR. Mot. 1012. The evidence also is identical, including the
`
`reliance on the same declaration of Dr. Reynolds. Id.
`
`
`
`Petitioner further has shown that the trial schedule will not be affected
`
`by joinder. Mot. 1112. No changes in the schedule are anticipated or
`
`necessary, and the limited participation, if at all, of Petitioner will not impact
`
`the timeline of the ongoing trial. We limit Petitioner’s participation in the
`
`joined proceeding such that Petitioner shall require prior authorization from
`
`the Board before filing any further paper. This arrangement promotes the
`
`just and efficient administration of the ongoing trial and the interests of
`
`Petitioner and Patent Owner.
`
`IV. ORDER
`
`In view of the foregoing, it is
`
`ORDERED that IPR2017-00678 is hereby instituted on the following
`
`grounds:
`
`
`
`4
`
`
`
`IPR2017-00678
`Patent 8,504,746 B2
`
`
`Reference(s)
`Kawaguchi, and Matsumoto
`
`Kawaguchi, Matsumoto, and
`DASM-AD14
`Kawaguchi, Matsumoto, and
`Saito
`Kawaguchi, Matsumoto, Saito,
`and Muramatsu,
`
`
`
`Basis
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`Claim(s)
`112, 15, 1719, 26,
`2931, 34, and 35
`21, 24, 25, 27, and 28
`
`20
`
`23
`
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`
`IPR2016-01211 is granted;
`
`FURTHER ORDERED that the grounds on which trial in IPR2016-
`
`01211 was instituted are unchanged and no other grounds are included in the
`
`joined proceeding;
`
`FURTHER ORDERED that the Scheduling Order entered in
`
`IPR2016-01211 (Paper 12) and schedule changes agreed-to by the parties in
`
`IPR2016-01211 (pursuant to the Scheduling Order) shall govern the
`
`schedule of the joined proceeding;
`
`FURTHER ORDERED that, throughout the joined proceeding, all
`
`filings in IPR2016-01211 will be consolidated and no filing by Petitioner
`
`LG alone will be allowed without prior authorization by the Board;
`
`FURTHER ORDERED that a copy of this Decision will be entered
`
`into the record of IPR2016-01211;
`
`FURTHER ORDERED that IPR2017-00678 is terminated under
`
`37 C.F.R. § 42.72 and all further filings in the joined proceeding are to be
`
`made in IPR2016-01211; and
`
`
`
`5
`
`
`
`IPR2017-00678
`Patent 8,504,746 B2
`
`
`FURTHER ORDERED that the case caption in IPR2016-01211 shall
`
`be changed to reflect joinder with this proceeding in accordance with the
`
`attached example.
`
`
`
`PETITIONER:
`
`Herbert H. Finn (Lead Counsel)
`Jonathan E. Giroux (Back-up Counsel)
`GREENBERG TRAURIG, LLP
`finnh@gtlaw.com
`girouxj@gtlaw.com
`LG-Papst-IPR@gtlaw.com
`
`
`
`PATENT OWNER:
`
`Nicholas T. Peters (Lead Counsel)
`Paul Henkelmann (Back-Up Counsel)
`FITCH, EVEN, TABIN & FLANNERY LLP
`ntpete@fitheven.com
`phenkelmann@fitcheven.com
`
`6
`
`
`
`
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 9
` Entered: May 19, 2017
`
`Example Case Caption for Joined Proceeding
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`
`
`
`
`
`CANON INC., CANON U.S.A., INC., CANON FINANCIAL SERVICES,
`INC., FUJIFILM CORPORATION, FUJIFILM HOLDINGS AMERICA
`CORPORATION, FUJIFILM NORTH AMERICA CORPORATION, JVC
`KENWOOD CORPORATION, JVCKENWOOD USA CORPORATION,
`NIKON CORPORATION, NIKON INC., OLYMPUS CORPORATION,
`OLYMPUS AMERICA INC., PANASONIC CORPORATION,
`PANASONIC CORPORATION OF NORTH AMERICA, SAMSUNG
`ELECTRONICS CO., LTD., and SAMSUNG ELECTRONICS AMERICA,
`INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`_______________
`
`Case IPR2016-012111
`Patent 8,504,746 B2
`_______________
`
`
`
`
`
`
`1 Case IPR2017-00678, filed by LG Electronics, Inc., has been joined with
`this proceeding.
`
`