UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2019-01530
`U.S. Patent No. 6,993,049
`____________
`
`
`PETITIONER’S MOTION FOR JOINDER
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2019-01530
`U.S. Patent No. 6,993,049
`____________
`
`
`PETITIONER’S MOTION FOR JOINDER
`
`
`
`
`
`Proceeding No. IPR2019-01530
`Attorney Docket: 19688-0058IP1
`I. STATEMENT OF PRECISE RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioner, LG
`
`Electronics, Inc. (“LG” or “Petitioner”) moves for joinder with the Inter Partes
`
`Review of U.S. Patent No. 6,993,049 (“the ’049 patent”), Apple Inc. v. Uniloc
`
`2017 LLC, IPR2019-00251 (“the Apple IPR”), for which trial was instituted on
`
`July 22, 2019. See IPR2019-00251, Paper 7. This motion is timely because it is
`
`being filed within one month of institution of the Apple IPR. 37 C.F.R.
`
`§ 42.122(b). Petitioner understands that the Petitioner in the Apple IPR (“the
`
`Apple Petitioner”) does not oppose Petitioner’s request for joinder.
`
`Petitioner requests institution of the Petition for Inter Partes Review being
`
`filed concurrently herewith. The Petition is a copy of the original Apple IPR
`
`petition in all material respects. The concurrently filed Petition and the Apple
`
`IPR petition challenge the same claims of the ’049 patent on the same grounds
`
`relying on the same prior art and evidence, including an identical declaration
`
`from the same expert.1
`
`Petitioner agrees to proceed solely on the grounds, evidence, and
`
`arguments advanced, or that will be advanced, in the Apple IPR as instituted.
`
`
`1 The expert declaration is an exact duplicate of the declaration filed in IPR2019-
`
`00251.
`
`
`
`1
`
`
`
`
`
`Proceeding No. IPR2019-01530
`Attorney Docket: 19688-0058IP1
`
`Thus, the Petition warrants institution under 35 U.S.C. § 314, and 35 U.S.C.
`
`§ 315(c) permits Petitioner’s joinder to the Apple IPR.
`
`Further, upon joining the Apple proceeding, Petitioner will act as an
`
`“understudy” and will not assume an active role unless the Apple Petitioner ceases
`
`to participate in the instituted IPR. The Apple Petitioner will maintain the lead role
`
`in the proceeding so long as it is a party to the proceeding. Petitioner will only
`
`assume the lead role in the proceeding if the Apple Petitioner is no longer a party
`
`to the proceeding or is unable to advance arguments for one or more claims, or
`
`grounds. Absent a Board order precluding the Apple Petitioner from making
`
`arguments that would otherwise be available to Petitioner, Petitioner will not
`
`advance any arguments separate from those advanced by the Apple Petitioner.
`
`These limitations will avoid lengthy and duplicative briefing. Also, Petitioner will
`
`not seek additional depositions or deposition time. Petitioner agrees to the
`
`foregoing conditions even in the event that other IPRs filed by other, third-party
`
`petitioners are joined with the Apple IPR. Accordingly, the proposed joinder will
`
`neither unduly complicate the Apple IPR nor delay its schedule.
`
`In fact, joinder will help efficiently resolve the disputes among the parties.
`
`By joinder, a single Board decision may dispose of the issues raised in the Apple
`
`IPR for all interested parties. Further, the Patent Owner has asserted the ’049
`
`patent in district court against LG Electronics U.S.A., Inc., LG Electronics, Inc.,
`
`
`
`2
`
`
`
`
`and LG Electronics Mobilecomm U.S.A., Inc. Joinder will, thus, narrow the issues
`
`Proceeding No. IPR2019-01530
`Attorney Docket: 19688-0058IP1
`
`in the district court actions. See 35 U.S.C. § 315(e)(2). Finally, joinder would not
`
`complicate or delay the Apple IPR, and would not adversely affect any schedule
`
`set in that proceeding. In sum, joinder would promote efficient adjudication in
`
`multiple forums.
`
`Joinder will not unduly prejudice any party. Because joinder will not add
`
`any new substantive issues, delay the schedule, burden deponents, or increase
`
`needless filings, any additional costs on the Patent Owner would be minimal. On
`
`the other hand, denial of joinder would prejudice LG. Its interests may not be
`
`adequately protected in the Apple IPR proceeding, particularly if the Apple
`
`Petitioner settles with the Patent Owner. Petitioner should be allowed to join in a
`
`proceeding affecting a patent asserted against them.
`
`II. BACKGROUND AND RELATED PROCEEDINGS
`Uniloc 2017 LLC (the “Patent Owner”) is the owner of the ’049 patent. The
`
`Patent Owner asserted the ’049 patent against LG in Uniloc USA, Inc. et al v. LG
`
`Electronics USA, Inc. et al 3-18-cv-00559 (N.D. Tex.) and Uniloc USA Inc. et
`
`al v. LG Electronics USA Inc. et al 5-18-cv-06738 (N.D. Cal.) and against
`
`Apple Inc., HTC, Motorola Mobility, ZTE, Inc., Blackberry Corporation,
`
`Microsoft, Huawei, Logitech, and Samsung in the following cases: Uniloc
`
`USA, Inc. et al v. Apple, Inc. 5-19-cv-01695 (N.D. Cal.); Uniloc 2017 LLC v.
`
`
`
`3
`
`
`
`
`HTC America, Inc. 2-18-cv-01727 (W.D. Wash.); Uniloc 2017 LLC v. Motorola
`
`Proceeding No. IPR2019-01530
`Attorney Docket: 19688-0058IP1
`
`Mobility, LLC 1-18-cv-01840 (D. Del.); Uniloc 2017 LLC v. ZTE, Inc. et al 3-18-
`
`cv-03063 (N.D. Tex.); Uniloc 2017 LLC v. Blackberry Corporation 3-18-cv-
`
`03068 (N.D. TEX.); Apple Inc. et al v. Uniloc 2017 LLC IPR2019-00251
`
`(PTAB); Uniloc USA Inc. et al v. ZTE (USA) Inc. et al 3-18-cv-02839 (N.D.
`
`TEX.); Uniloc 2017 LLC et al v. Microsoft Corporation 8-18-cv-01279 (C.D.
`
`Cal.); Uniloc USA, Inc. et al v. ZTE (USA), Inc. et al 2-18-cv-00307 (E.D.
`
`TEX.); Uniloc USA Inc. et al v. Blackberry Corporation 3-18-cv-01885 (N.D.
`
`TEX.); Uniloc USA, Inc. et al v. Huawei Device USA, Inc. et al 2-18-cv-00074
`
`(E.D. TEX.); Uniloc USA, Inc. et al v. Logitech Inc. et al 5-18-cv-01304 (N.D.
`
`Cal.); Uniloc USA, Inc. et al v. Samsung Electronics America, Inc. et al 2-18-
`
`cv-00040 (E.D. TEX.); and Uniloc USA, Inc. et al v. Apple Inc. 1-18-cv-00164
`
`(W.D. Tex.). In addition, U.S. Patent No. 6,993,049 is the subject of an inter
`
`partes review in Microsoft Corporation v. Uniloc 2017 LLC, IPR2019-01026, filed
`
`June 6, 2019.
`
`III. STATEMENT OF REASONS FOR THE REQUESTED RELIEF
`A. Legal Standards and Applicable Rules
`The Board has discretion to join a properly filed IPR petition to an IPR
`
`proceeding. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); see also Dell Inc. v.
`
`Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 19, at 4-6; Sony Corp. v.
`
`
`
`4
`
`
`
`
`Yissum Res. & Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013- 00326, Paper
`
`Proceeding No. IPR2019-01530
`Attorney Docket: 19688-0058IP1
`
`15, at 3-4; Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 15, at 3-4.
`
`“The Board will determine whether to grant joinder on a case-by-case basis, taking
`
`into account the particular facts of each case, substantive and procedural issues,
`
`and other considerations.” Dell, IPR2013-00385, Paper 19, at 3. The movants bear
`
`the burden of proof in establishing entitlement to the requested relief. 37 §§
`
`42.20(c), 42.122(b). A motion for joinder should:
`
`(1) set forth the reasons why joinder is appropriate; (2) identify any
`new grounds of unpatentability asserted in the petition; (3) explain
`what impact (if any) joinder would have on the trial schedule for the
`existing review; and (4) address specifically how briefing and
`discovery may be simplified.
`
`Dell, IPR2013-00385, Paper 19, at 4.
`
`B.
`Joinder with the Apple IPR is appropriate
`The Board “routinely grants motions for joinder where the party seeking
`
`joinder introduces identical arguments and the same grounds raised in the existing
`
`proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper
`
`No. 12 at 9 (Aug. 24, 2016) (emphasis added) (internal quotations and citations
`
`omitted). Here, joinder with the Apple IPR is appropriate because the LG Petition
`
`introduces identical arguments and the same grounds raised in the existing Apple
`
`IPR (i.e., they contain the same grounds (based on the same prior art combinations
`
`
`
`5
`
`
`
`
`and supporting evidence) against the same claims). Indeed, there are no changes to
`
`Proceeding No. IPR2019-01530
`Attorney Docket: 19688-0058IP1
`
`the facts, citations, evidence, or arguments used by the Apple Petition in
`
`demonstrating satisfaction of the implicated claims by the applied prior art.
`
`Because these proceedings introduce identical arguments and the same grounds,
`
`good cause exists for joining this proceeding with the Apple IPR so that the Board,
`
`consistent with 37 C.F.R. § 42.1(b), can efficiently “secure the just, speedy, and
`
`inexpensive resolution” of the LG and Apple Petitions.
`
`Moreover, Petitioner notes that the Board has indicated that the factors
`
`outlined by General Plastics are not particularly relevant here “where a different
`
`petitioner files a ‘me-too’ or ‘copycat’ petition in conjunction with a timely motion
`
`to join.” See, e.g., Celltrion, Inc. v. Genentech, Inc., IPR2018-01019, Paper 11 at
`
`9-11 (PTAB Oct. 30, 2018); Pfizer, Inc. v Genentech, Inc., IPR2017-02063, Paper
`
`25 at 7-8 (PTAB Feb. 21, 2018). The Apple IPR has already been instituted, and
`
`joinder poses no new burden on Patent Owner. Moreover, through this motion to
`
`join and corresponding petition, Petitioner has not modified positions advanced in
`
`the other independent proceeding, i.e., IPR2019-00251, which was instituted. See,
`
`e.g., Celltrion, IPR2018-01019, Paper 11 at 10-11 (finding Petitioner’s “copycat”
`
`petition and motion to join an instituted IPR to “effectively obviate[] any concerns
`
`of serial harassment and unnecessary expenditure of resources,” even though
`
`Petitioner “previously filed two petitions directed to the same claims of the same
`
`
`
`6
`
`
`
`
`patent.”). Rather, through grant of this joinder, the Board is simply offered the
`
`Proceeding No. IPR2019-01530
`Attorney Docket: 19688-0058IP1
`
`opportunity to ensure that the instituted Apple IPR is not prematurely terminated
`
`based on opportunistic settlement by Patent Owner with fewer than all parties
`
`against which it has asserted the subject patent.
`
`C.
`
`Joinder will not add any new grounds of unpatentability or have
`an impact on the trial schedule
`The Petition is based on the same grounds and combinations of prior art that
`
`the Board considered in deciding to institute the Apple IPR. For simplicity and
`
`efficiency, Petitioner has copied the substance of Apple’s petition and
`
`accompanying declaration. Petitioner does not seek to introduce grounds or claims
`
`not in the Apple IPR and seeks only to join the proceeding as instituted. Petitioner
`
`is using the same expert, and has submitted an identical declaration as in the Apple
`
`IPR. The Patent Owner should not require any discovery beyond that which it may
`
`need in the Apple IPR—nor should the Board permit any. The petition presents no
`
`new substantive issues relative to the Apple IPR and does not seek to broaden the
`
`scope of the Apple IPR.
`
`Joinder will not impact the Apple IPR trial schedule because the LG Petition
`
`presents no new issues or grounds of unpatentability. See LG, IPR2015-01353,
`
`Paper No. 11 at 6 (granting IPR and motion for joinder where “joinder should not
`
`necessitate any additional briefing or discovery from Patent Owner beyond that
`
`
`
`7
`
`
`
`
`already required in [the original IPR]”). Further, Petitioner explicitly consents to
`
`Proceeding No. IPR2019-01530
`Attorney Docket: 19688-0058IP1
`
`the existing trial schedule. There are no new issues for the Board to address, and
`
`Patent Owner will not be required to present any additional responses or
`
`arguments.
`
`The Patent Owner’s Response will also not be negatively impacted because
`
`the issues presented in the LG Petition are identical to the issues presented in the
`
`Apple Petition. Patent Owner will not be required to provide any additional
`
`analysis or arguments beyond what it will already provide in responding to the
`
`petition in the Apple IPR. Also, because the LG Petition relies on the same expert
`
`and the same declaration, only a single deposition is needed for the proposed
`
`joined proceeding.
`
`Accordingly, joinder with the Apple IPR does not unduly burden or
`
`negatively impact the trial schedule.
`
`D.
`Procedures to simplify briefing and discovery
`LG explicitly agrees to take an “understudy” role, which will simplify
`
`briefing and discovery. Specifically, LG explicitly agrees, upon joining the Apple
`
`proceeding, that the following conditions, as previously approved by the Board in
`
`similar circumstances, shall apply so long as the current petitioner in IPR2019-
`
`00251 remains an active party:
`
`
`
`8
`
`
`
`
`
`Proceeding No. IPR2019-01530
`Attorney Docket: 19688-0058IP1
`
`a) all filings by LG in the joined proceeding be consolidated with the
`
`filings of the current petitioner, unless a filing concerns issues solely
`
`involving LG;
`
`b) LG shall not be permitted to raise any new grounds not already
`
`instituted by the Board in the Apple IPR, or introduce any argument
`
`or discovery not already introduced by the current petitioner;
`
`c) LG shall be bound by any agreement between Patent Owner and the
`
`current petitioner concerning discovery and/or depositions; and
`
`d) LG at deposition shall not receive any direct, cross examination or
`
`redirect time beyond that permitted under either 37 C.F.R. § 42.53 or
`
`any agreement between Patent Owner and the current petitioner.
`
`See Noven Pharmaceuticals, Inc. v. Novartis AG, IPR2014-00550, Paper No.
`
`38 at 5 (Apr. 10, 2015). Unless and until the current petitioner ceases to participate
`
`in the instituted IPR proceeding, LG will not assume an active role therein.
`
`Thus, by LG accepting an “understudy” role, Patent Owner and the current
`
`petitioner can comply with the existing trial schedule without needing any
`
`duplicative efforts by the Board or the Patent Owner. These steps minimize the
`
`possibility of any complication or delay from joinder. See LG, IPR2015-01353,
`
`
`
`9
`
`
`
`
`Paper No. 11 at 6-7 (granting IPR and motion for joinder because “joinder would
`
`Proceeding No. IPR2019-01530
`Attorney Docket: 19688-0058IP1
`
`increase efficiency by eliminating duplicative filings and discovery, and would
`
`reduce costs and burdens on the parties as well as the Board” where petitioners
`
`agreed to an “understudy” role). LG is further willing to agree to any other
`
`reasonable conditions the Board deems necessary.
`
`IV. THIS MOTION FOR JOINDER IS NOT AFFECTED BY THE CLAIM
`CONSTRUCTION RULE CHANGE
`The final rule implementing the change in claim construction standard from
`
`the BRI standard to the standard articulated in Phillips does not impact this motion
`
`for joinder. The final rule indicates that the Office will “continue to apply the BRI
`
`standard for construing unexpired patent claims and proposed substituted claims
`
`for AIA proceedings where a petition was filed before the effective date of the
`
`final rule.” 83 Fed. Reg. 51340, 51344 (Oct. 11, 2018) (emphasis added). The
`
`Apple Petition was filed before the effective date of the final rule, and, with this
`
`motion for joinder, LG seeks to be joined as a co-petitioner to that proceeding. See
`
`35 U.S.C. § 315(c) (“join as a party to that inter partes review”). As is customary,
`
`granting of this motion would result in LG being “joined as a petitioner in that case
`
`[i.e., the Apple Petition] pursuant to 37 C.F.R. § 42.122” and the dismissal of LG's
`
`copy-cat petition (i.e., IPR2019-01530) pursuant to 37 C.F.R. § 42.71(a). See, e.g.,
`
`Samsung Electronics America, Inc. v. Uniloc 2017 LLC, IPR2018-01383, Paper 9
`
`
`
`10
`
`
`
`
`at 6 (PTAB Nov. 19, 2018) (emphasis added). Thus, the rules applicable to the
`
`Proceeding No. IPR2019-01530
`Attorney Docket: 19688-0058IP1
`
`Apple Petition (e.g., the BRI claim construction standard) remain unchanged, as
`
`“that case” will proceed and this copy-cat petition will be dismissed.
`
`Indeed, the Board has previously considered this issue and found that the
`
`change in claim construction standard does not prevent joinder where the initial
`
`petition was filed before the change and the copycat petition was filed after the
`
`change. See, e.g., LG Electronics Inc. v. Cywee Group LTD., IPR2019-00559,
`
`Paper 21 at pp. 34-35 (PTAB 2019)(“Because the petitioner in the related IPR filed
`
`its petition prior to the date the Board changed the claim construction standard it
`
`uses in trial proceedings, the related IPR will continue to use the broadest
`
`reasonable interpretation, regardless of the joinder of any parties to that
`
`proceeding.”); Priceline.com LLC et al. v. DDR Holdings, LLC, IPR2019-00439,
`
`Paper 9 at p. 10 (PTAB 2019)(“We agree with Petitioner that ‘joinder of the
`
`Petition with the [related IPR] will not prejudice Patent Owner in any way as the
`
`[related IPR] has already been instituted under the broadest reasonable
`
`interpretation standard and using a plain and ordinary meaning standard would not
`
`adversely impact Patent Owner.’”); Pfizer Inc. v. Sanofi-Aventis Deutschland
`
`GMBH, IPR2019-00980, Paper 12 at p. 8 (PTAB 2019)(“we will construe any
`
`claim term that requires construction according to the broadest reasonable
`
`interpretation standard. If, however, any party contends that a claim term should be
`
`
`
`11
`
`
`
`
`given a different interpretation from the broadest reasonable interpretation under
`
`Proceeding No. IPR2019-01530
`Attorney Docket: 19688-0058IP1
`
`the federal court claim construction standard used in a civil action under 35 U.S.C.
`
`§ 282(b), that party may request authorization to file an additional brief in support
`
`of its contentions.”). Thus, the change in claim construction standard does not
`
`impact this motion for joinder.
`
`V. CONCLUSION
`Joinder will not affect the substance, procedure, or scheduling of the Apple
`
`IPR. Petitioner files this motion under the statutory joinder provisions as
`
`contemplated by the AIA. Joinder will simplify the issues and promote efficiency,
`
`justice, and speed.
`
`For the foregoing reasons, Petitioner respectfully requests inter partes
`
`review of U.S. Patent No. 6,993,049 and joinder with Apple Inc. v. Uniloc 2017
`
`LLC, IPR2019-00251.
`
`
`
`Dated: August 22, 2019
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`/W. Karl Renner/
`W. Karl Renner, Reg. No. 41,265
`Jeremy J. Monaldo, Reg. No. 58,680
`Roberto J. Devoto, Reg. No. 55,108
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-626-5070, F: 877-769-7945
`
`Attorneys for Petitioner
`
`
`
`
`
`
`
`(Control No. IPR2019-01530)
`
`
`
`
`
`
`
`12
`
`
`
`
`
`
`Proceeding No. IPR2019-01530
`Attorney Docket: 19688-0058IP1
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e), the undersigned certifies that on August 22,
`
`2019, a complete and entire copy of this Motion for Joinder was provided via
`
`FedEx, to the Patent Owner by serving the correspondence address of record as
`
`follows:
`
`Philips Intellectual Property & Standards
`465 Columbus Avenue
`Suite 340
`Valhalla, NY 10595
`
`
`
`
`
`
`
`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
