THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`
`
`LG Electronics, Inc. and LG Electronics U.S.A., Inc.,
`
`Petitioners,
`
`v.
`
`Ancora Technologies, Inc.
`
`Patent Owner
`
`
`__________________
`
`
`Case No. IPR2021-00581
`
`Patent No. 6,411,941 B1
`
`
`__________________
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`JOINDER UNDER 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, and 42.122(b)
`
`
`
`
`
`
`
`
`
`
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`
`
`LG Electronics, Inc. and LG Electronics U.S.A., Inc.,
`
`Petitioners,
`
`v.
`
`Ancora Technologies, Inc.
`
`Patent Owner
`
`
`__________________
`
`
`Case No. IPR2021-00581
`
`Patent No. 6,411,941 B1
`
`
`__________________
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`JOINDER UNDER 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, and 42.122(b)
`
`
`
`
`
`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Opposition to Joinder
`IPR2021-00581 / LG Electronics, Inc. et al. v. Ancora Techs.
`
`
`TABLE OF CONTENTS
`
`
`
`
`
`INTRODUCTION ..................................................................................................... 1
`
`I. Joinder is appropriate because it would allow completion of an already
`
`instituted IPR and obviate the need for multiple pending lawsuits ........................... 2
`
`II. The Board’s expedited schedule already ensures that Ancora’s filing of a second
`
`Preliminary Response will not unduly delay proceedings ......................................... 4
`
`III. General Plastic and Fintiv denial are not appropriate ......................................... 5
`
`
`
`
`
`
`
`
`
`
`ii
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Opposition to Joinder
`IPR2021-00581 / LG Electronics, Inc. et al. v. Ancora Techs.
`
`
`INTRODUCTION
`
`
`
`Petitioners LG Electronics, Inc. and LG Electronics U.S.A., Inc. (“LGE”)
`
`respectfully submit this Reply to patent owner Ancora Technologies, LLC’s
`
`(“Ancora”) Opposition to LGE’s motion for joinder.
`
`Ancora’s opposition concedes those facts that make it appropriate for the
`
`Board to exercise its discretion to allow joinder in this case. Ancora does not
`
`dispute that the ’941 patent is the subject of at least five pending lawsuits (against
`
`HTC, Samsung, Lenovo, Sony, and LGE), at least two of which (against Lenovo
`
`and Sony) are not scheduled for trial until well after a final written decision would
`
`issue and which thus could be obviated if joinder were granted in this case. See
`
`LGE Motion for Joinder (“Motion”) at 4-5; Petition in IPR2021-00581 at 9. Nor
`
`does Ancora dispute LGE’s showing that its request for me-too joinder to an
`
`already instituted petition and the impending termination of TCL as a party
`
`simplifies the case and favors joinder under the Kyocera factors. See Motion at 6-
`
`12. And finally, Ancora does not dispute that LGE lacks a significant relationship
`
`with the parties that have previously filed petitions challenging the ’941 patent—
`
`indeed, it concedes that those parties are competitors of LGE and that LGE has not
`
`previously filed a petition (Opposition at 12, 20)—facts that weigh strongly against
`
`discretionary denial under General Plastic.
`
`1
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Opposition to Joinder
`IPR2021-00581 / LG Electronics, Inc. et al. v. Ancora Techs.
`
`
`Joinder is appropriate because it would allow completion of an already
`instituted IPR and obviate the need for multiple pending lawsuits
`
`I.
`
`
`
`There is no per se rule that a joinder motion that is filed before termination is
`
`requested will be granted—instead, the Board decides such joinder motions “on a
`
`case-by-case basis upon consideration of the totality of the circumstances.” ZTE
`
`(USA) LLC v. Seven Networks, LLC, IPR2019-00460 (Jun. 6, 2019). The ZTE
`
`case, on which Ancora relies (Opposition at 7), illustrates the type of
`
`circumstances in which the Board has exercised its discretion to deny joinder—and
`
`highlights why the Board should allow joinder in the very different circumstances
`
`of this case. In ZTE, a single joinder petitioner sought to join four IPRs that the
`
`parties had sought to terminate. Denying joinder and allowing full termination in
`
`ZTE allowed obviating fourteen IPRs that one party had filed (nine of which had
`
`yet to be instituted) and eleven IPRs that another party had filed. See ZTE,
`
`IPR2019-00460 (Jun. 6, 2019); ZTE (USA) LLC v. Seven Networks, LLC,
`
`IPR2019-00412 (Feb. 28, 2019). In addition, allowing joinder would have
`
`required litigation over confidential information which the joinder petitioner was
`
`ill-suited to conduct in an understudy role. See IPR2019-00460 (Jun. 5, 2019).
`
`The present case could not be more different. Allowing LGE to join this one
`
`IPR would not prevent any other IPRs from being terminated and would not
`
`present any awkward confidential-information issues. On the other hand, allowing
`
`2
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Opposition to Joinder
`IPR2021-00581 / LG Electronics, Inc. et al. v. Ancora Techs.
`
`LGE to join would likely obviate the need for at least two district court actions and
`
`may result in the stay of other scheduled trials. And the only IPR that LGE seeks
`
`to join has already been instituted—the Board has already considered the claimed
`
`invention, evaluated the prior art, and preliminarily determined that the claims
`
`would have been obvious. Because finishing a single IPR that the Board has
`
`already started would obviate the need for multiple district court litigations that
`
`have not yet begun, the equities favor exercising discretion to allow joinder in this
`
`case.
`
`The other decisions that Ancora cites are similarly inapposite—this case does
`
`not involve the previous filing of unsuccessful petitions or extreme dilatory
`
`behavior by the joinder petitioner (see Mylan Techs. Inc. v. MonoSol Rx, LLC,
`
`IPR2017-00200, Paper 19 at 6 (Sep. 29, 2017); Par Pharm., Inc. v. MonoSol Rx,
`
`LLC, IPR2017-01557, Paper 8 at 25-26 (Sep. 19, 2017)) (three-year delay in
`
`filing), nor does petitioner here seek vacatur of a termination decision after its
`
`independent petition was denied. See LG Elecs., Inc. v. Cellular Commc’ns Equip.
`
`LLC, IPR2016-00711, Paper 7 at 3-4 (May 13, 2016).1 Instead, this case is akin to
`
`
`
`1 Ancora also cites the denial of joinder in Aerohive Networks, Inc. v. Chrimar
`
`Sys., Inc., IPR2016-01757, paper 3 (PTAB Sep. 8, 2016). The Board in that case
`
`did not explain why it refused to allow joinder before granting termination, but it
`
`3
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Opposition to Joinder
`IPR2021-00581 / LG Electronics, Inc. et al. v. Ancora Techs.
`
`
`those in which the joinder petition does not “introduce any new issues or
`
`argument” or present any other complications, and thus allowing joinder and
`
`terminating only as to the original petitioner would serve the “just, speedy, and
`
`inexpensive” resolution of proceedings. Facebook, Inc. v. Windy City Innovations,
`
`LLC, IPR2017–00624 (May 31, 2017) (quoting 37 C.F.R. § 42.1(b)); see also
`
`MediaTek Inc., et. al. v. Bandspeed, Inc., IPR2015-00314, Paper 20 at 3 (PTAB
`
`Sept. 17, 2015); Nintendo of Am. v. Babbage Holdings, LLC, IPR2015-00568
`
`(PTAB Mar. 18, 2015) (noting that termination of the original petitioner simplifies
`
`proceedings and thus favors joinder).
`
`II. The Board’s expedited schedule already ensures that Ancora’s filing of
`a second Preliminary Response will not unduly delay proceedings
`
`
`
` Ancora asserts that the original proceeding will “suffer an unduly long
`
`delay” if joinder is allowed. Opposition at 9. First, the Board has already taken
`
`steps to mitigate any delay, issuing an expedited briefing schedule that requires
`
`
`
`may have relied on the patent owner’s argument that joinder petitions are not
`
`excepted from the § 315(b) time limit—an interpretation that courts have since
`
`rejected. See Thryv, Inc. v. Click-to-Call Techs., LP, 140 S.Ct. 1367, 1374 (2020)
`
`(noting that “the § 315(b)-barred party can join a proceeding initiated by another
`
`petitioner” via § 315(c)).
`
`4
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Opposition to Joinder
`IPR2021-00581 / LG Electronics, Inc. et al. v. Ancora Techs.
`
`
`Ancora to file its new preliminary response on April 23. Ancora assumes that the
`
`remainder of the pre-institution proceedings will nevertheless follow the extended
`
`default schedule but cites no reason for this assumption. Briefing on joinder and
`
`discretionary denial issues will be complete before Ancora’s preliminary response
`
`is due.
`
`And perhaps more fundamentally, the principal cause of any delay in this
`
`proceeding would be Ancora’s own insistence on filing a second preliminary
`
`response to a substantively identical petition. Ancora contends that it “has a
`
`unique need for a preliminary response” because it previously chose to only
`
`address claim construction and not file an expert declaration, but that it now
`
`“intends to offer a fulsome preliminary response.” Opposition at 10.
`
`LGE does not object to Ancora’s receiving a second opportunity to address
`
`the merits of the petition. Ancora should not, however, be allowed to demand this
`
`“second bite at the apple” while complaining that it unduly delays the proceedings.
`
`Ancora should have presented its merits arguments in response to the original,
`
`substantively identical petition—before review was instituted. Its own deliberate
`
`bypass of that opportunity should not be held to weigh against consideration of
`
`LGE’s timely filed (indeed, early filed) joinder petition.
`
`III. General Plastic and Fintiv denial are not appropriate
`
`
`
`As Ancora concedes, LGE has not previously filed a petition challenging the
`
`5
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Opposition to Joinder
`IPR2021-00581 / LG Electronics, Inc. et al. v. Ancora Techs.
`
`
`’941 patent, nor does it have a “significant relationship” with any entity that has
`
`previously filed a petition—Ancora acknowledges that those previous filers make
`
`“competing products.” Opposition at 12, 20. Although LGE has been sued in the
`
`same district court as Samsung and the cases against LGE and Samsung were
`
`consolidated, LGE and Samsung have not contributed to or coordinated each
`
`other’s IPR filings—again, Samsung is a competitor that lacks any significant
`
`relationship with LGE. The Board has recently found that such circumstances
`
`weigh “strongly against discretionary denial of the Petition” under General Plastic.
`
`Qualcomm Incorporated v. Monterey Research, LLC, IPR2020-01491, Paper 10 at
`
`10 (Mar. 8, 2021); see also id. at 11 (“knew or should have known” factor is
`
`neutral when the parties “are neither the same party nor related parties”); see also
`
`Netflix, Inc. v. Broadcom Corp., IPR2020-01423 (Mar. 11, 2021) (prior petition by
`
`unrelated petitioner is not a basis for denial of institution).
`
`Nor should Ancora be heard to complain that it has faced previous validity
`
`challenges in different fora, given its own admission that it has sued 10 different
`
`parties in a series of lawsuits staggered over a dozen years. Opposition at 2. When
`
`previous challenges are the direct result of a patent owner’s drawn out litigation
`
`activity, this weighs in favor of institution. See BMW v. Paice, IPR2020-01386,
`
`p. 26 (Feb. 5, 2021).
`
`Finally, although LGE itself faces an early trial date for the ’941 patent,
`
`6
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Opposition to Joinder
`IPR2021-00581 / LG Electronics, Inc. et al. v. Ancora Techs.
`
`
`Ancora does not dispute that allowing joinder would allow a review to be
`
`completed before trial in at least two other district court actions: the Sony action
`
`has a scheduled trial date of October 2022 and the Lenovo action does not yet have
`
`any scheduled trial date. See Petition at 9. Ancora cannot reasonably contend that
`
`it would create “system efficiency” and avoid “duplication of efforts” (Apple Inc.
`
`v. Fintiv, Inc., IPR2020-00019, Paper 11, at 5, 6) to abandon this already instituted
`
`IPR in favor of two different district court actions that are not scheduled for trial
`
`until late next year. Moreover, were joinder allowed, LGE would seek a stay in its
`
`district court case and other defendants would likely seek stays in their cases. To
`
`mitigate any overlap in the proceedings, LGE stipulates that if its joinder petition is
`
`instituted before the trial date of June 7, 2021, it will not subsequently assert
`
`invalidity in the district court on the same grounds asserted in the IPR or on the
`
`basis of the Hellman reference, either alone or in combination with any other
`
`reference.
`
`In conclusion, the Board has already determined that there is a reasonable
`
`likelihood that the Ancora patent is invalid. Ancora should welcome this
`
`opportunity to remove the cloud over its patent rather than seeking to enforce what
`
`has already preliminarily been determined to be an invalid patent. This panel
`
`should finish what it has already started rather than deferring to multiple future
`
`district court litigations.
`
`7
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Opposition to Joinder
`IPR2021-00581 / LG Electronics, Inc. et al. v. Ancora Techs.
`
`
`
`
`
`
`
`Dated: April 2, 2021
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
`
`
`Customer No. 27683
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`/David L. McCombs/
`David L. McCombs
`Lead Counsel for Petitioner
`Reg. No. 32,271
`
`
`
`
`
`
`
`
`
`
`8
`
`
`
`
`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Opposition to Joinder
`IPR2021-00581 / LG Electronics, Inc. et al. v. Ancora Techs.
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that
`
`service was made on the Patent Owner as detailed below:
`
`
`
`Date of service:
`
`April 2, 2021
`
`Manner of service:
`
`Electronic Mail
`
`Documents served:
`
`Persons served:
`
`
`
`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Opposition to Joinder
`Under 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, and 42.122(b)
`
`Nicholas T. Peters, ntpete@fitcheven.com
`David A. Gosse, dgosse@fitcheven.com
`Paul B. Henkelmann, PHenkelmann@fitcheven.com
`Ancora-ipr@fitcheven.com
`FITCH, EVEN, TABIN & FLANNERY LLP
`120 South LaSalle Street, Suite 2100
`Chicago, IL 60603
`
`
`
`Dated: April 2, 2021
`
`
`
`
`
`/David L. McCombs/
`David L. McCombs
`Lead Counsel for Petitioner
`Reg. No. 32,271
`
`
`
`9
`
`
`
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
