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`THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________
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`LG Electronics, Inc. and LG Electronics U.S.A., Inc.,
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`Petitioners,
`
`v.
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`Ancora Technologies, Inc.
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`Patent Owner
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`
`__________________
`
`
`Case No. IPR2021-00581
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`Patent No. 6,411,941 B1
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`
`__________________
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`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, and 42.122(b)
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`Motion for Joinder, IPR2021-00581
`LG Electronics, Inc. et al. v. Ancora Techs.
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`TABLE OF CONTENTS
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`
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`
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`I. STATEMENT OF PRECISE RELIEF REQUESTED ....................................... 3
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`II. BACKGROUND AND RELATED PROCEEDINGS ....................................... 4
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ............................ 5
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`a.
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`b.
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`c.
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`Legal Standard ........................................................................................ 5
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`Petitioner’s Motion for Joinder is Timely .............................................. 6
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`The Kyocera Factors Favor Joinder ....................................................... 6
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`i.
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`Factor 1: Joinder is appropriate ............................................................... 6
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`ii. Factor 2: LGE’s Petition proposes no new grounds of unpatentability ... 9
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`iii. Factor 3: Joinder will not unduly burden or negatively impact the TCT
`IPR trial schedule ..................................................................................10
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`iv. Factor 4: Procedures to simplify briefing and discovery .......................11
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`IV. CONCLUSION .................................................................................................13
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`ii
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`I. STATEMENT OF PRECISE RELIEF REQUESTED
`
`Motion for Joinder, IPR2021-00581
`LG Electronics, Inc. et al. v. Ancora Techs.
`
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`Petitioners LG Electronics, Inc. and LG Electronics U.S.A., Inc. (“LGE”)
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`respectfully submit this Motion for Joinder together with a Petition for Inter Partes
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`Review of U.S. Patent No. 6,411,941 (“LGE’s Petition”). Pursuant to 35 U.S.C. §
`
`315(c) and 37 C.F.R. § 42.122(b), LGE requests inter partes review and joinder
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`with TCT Mobile (US) Inc. v. Ancora Technologies, Inc., IPR2020-01609 (“TCT
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`IPR Petition”) (“the TCT IPR”), which was instituted on February 16, 2021.
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`LGE’s Petition is substantively identical to the petition in the TCT IPR—
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`challenging the same claims of the ’941 Patent on the same grounds while relying
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`on the same prior art, arguments, and evidence. Additionally, if joined, LGE will
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`assume an “understudy” role. The instant Motion for Joinder and accompanying
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`Petition are being filed within one month of the decision instituting trial in the TCT
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`IPR and are therefore timely. Counsel for LGE has conferred with counsel for
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`TCT, and TCT has indicated that it opposes joinder.
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`Joinder is appropriate here because (i) LGE’s Petition is substantively
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`identical to the petition in the TCT IPR, (ii) LGE will assume an understudy role in
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`the joined trial, eliminating any impact on the existing trial schedule, and (iii) LGE
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`agrees to consolidated filings. Accordingly, joinder will provide for a just, speedy,
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`and inexpensive determination of related proceedings.
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`LGE is filing this petition and joinder motion to ensure that the instituted
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`3
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`
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`Motion for Joinder, IPR2021-00581
`LG Electronics, Inc. et al. v. Ancora Techs.
`
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`TCT IPR reaches a final decision in the event TCT settles with Patent Owner. In
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`that regard, if a Motion to Terminate is filed in the TCT IPR and is considered
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`before the Board considers this joinder motion, LGE respectfully requests that the
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`Board dismiss only the original petitioner, at least until the instant motion can be
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`considered. Doing so lowers the likelihood that the Board will have to reconsider
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`the same issues in a subsequent trial.
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`Accordingly, LGE respectfully requests that the Board grant this motion for
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`joinder.
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`II. BACKGROUND AND RELATED PROCEEDINGS
`1.
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`The owner of the ’941 Patent, Ancora Technologies, LLC (“Ancora”),
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`has filed suit against numerous different companies—including TCT and LGE—
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`alleging infringement of the ’941 Patent.
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`2.
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`On June 18, 2020, Ancora filed a complaint captioned Ancora
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`Technologies, Inc. v. LG Electronics, Inc., No. 6:19-cv-00384 (W.D. Tex.), which
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`is consolidated with the same-captioned case No. 1:20-cv-00034 (W.D. Tex.), filed
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`on June 21, 2019, alleging infringement of the ’941 Patent.
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`3.
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`Patent Owner has asserted the ’941 Patent against other parties in the
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`following currently-pending district-court lawsuits: Ancora Technologies, Inc. v.
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`TCT Mobile (US) Inc., No. 8:19-cv-02192 (C.D. Cal.); Ancora Technologies, Inc.
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`v. Lenovo Group Limited, No. 1:19-cv-01712 (D. Del.); Ancora Technologies, Inc.
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`4
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`
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`Motion for Joinder, IPR2021-00581
`LG Electronics, Inc. et al. v. Ancora Techs.
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`v. Sony Corp., No. 1:19-cv-01703 (D. Del.); Ancora Technologies, Inc. v. Samsung
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`Electronics Co., Ltd., No. 6:19-cv-00385 (W.D. Tex.); Ancora Technologies, Inc.
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`v. HTC America, Inc., No. 2:16-cv-01919 (W.D. Wash.).
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`4.
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`On February 16, 2021, the Board instituted review with respect to the
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`’941 patent in TCT Mobile (US) Inc. v. Ancora Technologies, Inc., IPR2020-
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`01609.
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`5.
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`On February 19, 2021, HTC Corporation filed a petition for inter
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`partes review against the ’941 Patent, IPR2021-00570 (“HTC IPR Petition”),
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`which is pending and seeks to join the instituted TCT IPR Petition.
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`6.
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`LGE’s Petition and this motion for joinder are being filed within one
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`month of the institution date of the TCT IPR.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
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`As explained in detail below, LGE’s motion for joinder should be granted
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`because the motion is timely, and the Kyocera factors favor joinder.
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`a. Legal Standard
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`The Board may join as a party to an instituted inter partes review a person
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`who has properly filed a petition for inter partes review that warrants institution.
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`35 U.S.C. § 315(c). Any request for joinder must be filed “no later than one month
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`after the institution date of any inter partes review for which joinder is requested.”
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`37 C.F.R. § 42.122(b). A petition for inter partes review is not subject to the one-
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`5
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`
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`Motion for Joinder, IPR2021-00581
`LG Electronics, Inc. et al. v. Ancora Techs.
`
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`year statutory time bar if the petition is accompanied by a request for joinder. 35
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`U.S.C. § 315(b); 37 C.F.R. § 42.122(b).
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`“A motion for joinder should (1) set forth reasons why joinder is
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`appropriate; (2) identify any new grounds of unpatentability asserted in the
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`petition; (3) explain what impact (if any) joinder would have on the trial schedule
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`for the existing review; and (4) address specifically how briefing and discovery
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`may be simplified.” Samsung Elecs., Co. v. Raytheon Co., IPR2016-00962, Paper
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`12 at 5 (PTAB Aug. 24, 2016) (citing Kyocera Corp. v. Softview LLC, IPR2013-
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`00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).
`
`b. Petitioner’s Motion for Joinder is Timely
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`LGE’s Motion for Joinder is timely because it is being filed within one
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`month of the February 16, 2021 institution of the TCT IPR. See 37 C.F.R.
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`§ 42.122(b).
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`c. The Kyocera Factors Favor Joinder
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`i. Factor 1: Joinder is appropriate
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`Joinder with the TCT IPR is appropriate because LGE’s Petition involves
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`the same patent, challenges the same claims, and is based on the same grounds and
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`same technical expert declaration testimony relied upon in TCT’s Petition. In short,
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`LGE’s Petition does “not present issues that might complicate or delay” the
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`existing TCT IPR. See Enzymotec Ltd. v. Neptune Techs & Bioresources, Inc.,
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`6
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`
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`Motion for Joinder, IPR2021-00581
`LG Electronics, Inc. et al. v. Ancora Techs.
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`IPR2014-00556, Paper 19 at 6 (July 9, 2014) (“we are mindful of a policy
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`preference for joining a party that does not present new issues that might
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`complicate or delay an existing proceeding”). Because LGE’s Petition is
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`substantively identical to the petition upon which the TCT IPR was instituted,
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`joinder would secure the just, speedy, and inexpensive resolution of the related
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`proceedings. Joinder would have little, if any, impact on the TCT IPR because no
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`new grounds would be added, the schedule would not be affected, no additional
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`briefing or discovery would be required, and no additional burdens would be
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`placed on Patent Owner, as detailed below.
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`Additionally, LGE is currently involved in litigation based on Patent
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`Owner’s allegation that LGE’s products infringe the ʼ941 patent. See, e.g., Ancora
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`Technologies, Inc. v. LG Electronics, Inc., No. 1:20-cv-00034 (W.D. Tex.). LGE
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`therefore has a particular interest in the substantial questions of invalidity
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`surrounding the ʼ941 patent. Joinder is also appropriate for the additional reason
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`that the invalidity grounds as to the challenged claims can be resolved through
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`LGE’s continued participation in the IPR process, even if the original petitioner in
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`IPR2020-01609 were to reach a settlement with Patent Owner, or otherwise cease
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`active participation in that proceeding. The public interest in “permitting full and
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`free competition in the use of ideas which are in reality a part of the public
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`domain” Lear, Inc. v. Adkins, 395 U.S. 653, 670 (1969), favors allowing joinder in
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`7
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`this case, as joinder would allow LGE to continue participating in the IPR process
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`Motion for Joinder, IPR2021-00581
`LG Electronics, Inc. et al. v. Ancora Techs.
`
`
`if TCT ceases active participation.
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`Under the rules, an inter partes review “shall be terminated with respect to
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`any petitioner upon the joint request of the petitioner and the patent owner.” 35
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`U.S.C. § 317(a). The Board, at its discretion, “may terminate the review” if no
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`petitioner remains. Id. In previous proceedings, the Board has exercised its
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`discretion not to terminate a review after dismissing the petitioner because of a
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`pending joinder motion in a related proceeding. See MediaTek Inc., et. al. v.
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`Bandspeed, Inc., IPR2015-00314, Paper 20 at 3 (PTAB Sept. 17, 2015) (“We
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`exercise the discretion afforded under 35 U.S.C. § 317(a) to decline, at this time, to
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`terminate these proceedings with respect to Patent Owner”). In MediaTek, the
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`Board, after noting that the joinder motion was filed before the motion to
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`terminate, chose to wait until after ruling on the joinder motion to consider whether
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`to terminate the review entirely. Id. See also Nintendo of Am. V. Babbage
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`Holdings, LLC, IPR2015-00568 (PTAB Mar. 18, 2015) (noting that impending
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`termination with respect to the original petitioner favors joinder by making it
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`“unlikely that [the joinder] Petitioner will need to coordinate with [the original]
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`Petitioner . . . and, therefore, unlikely that such coordination will disrupt the
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`schedule [of the IPR]”).
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`8
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`
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`Motion for Joinder, IPR2021-00581
`LG Electronics, Inc. et al. v. Ancora Techs.
`
`
`Here, if a motion to terminate is filed in the TCT IPR and TCT is dismissed
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`before this joinder motion has been decided, LGE respectfully requests that the
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`Board exercise its discretion and decline termination of Patent Owner at least until
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`the instant motion is considered. If the TCT IPR is completely terminated before
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`joinder can be effectuated, a proceeding with identical grounds of unpatentability
`
`would begin anew requiring the parties to expend resources rearguing the same
`
`issues.
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`Accordingly, joinder is appropriate because it eliminates the possibility of
`
`duplicate efforts and ensures a just, speedy, and inexpensive resolution of these
`
`proceedings.
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`ii. Factor 2: LGE’s Petition proposes no new grounds of
`unpatentability
`
`LGE’s Petition does not present any new grounds or arguments regarding
`
`unpatentability. It is substantively identical to TCT’s Petition. “The Board’s
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`joinder practice strongly favors petitions that are substantially similar to the
`
`petition that the party seeks to join.” Sling TV, L.L.C. v. Realtime Adaptive
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`Streaming, LLC, IPR2018-01342 (Jan. 17, 2020). The Board thus “routinely grants
`
`motions for joinder where the party seeking joinder introduces identical arguments
`
`and the same grounds raised in the existing proceeding.” BlackBerry Corp. v.
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`Uniloc 2017 LLC, IPR2019-01283, Paper 10 at 8 (PTAB Nov. 5, 2019) (quoting
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`9
`
`
`
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`Samsung, IPR2016-00962, Paper 12 at 9) (emphasis added). This factor therefore
`
`Motion for Joinder, IPR2021-00581
`LG Electronics, Inc. et al. v. Ancora Techs.
`
`
`favors joinder.
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`iii. Factor 3: Joinder will not unduly burden or negatively
`impact the TCT IPR trial schedule
`
`Joinder will not unduly burden Patent Owner. Because LGE’s Petition
`
`presents the same grounds and arguments as TCT’s Petition, there are no new
`
`issues for Patent Owner to address. See Sony Corp. v. Memory Integrity, LLC,
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`IPR2015-01353, Paper 11 at 6 (PTAB Oct. 15, 2015) (granting motion for joinder
`
`and instituting IPR where “joinder should not necessitate any additional briefing or
`
`discovery from Patent Owner beyond that already required in [the original IPR]”).
`
`Indeed, the Patent Owner’s Preliminary Response in the TCT IPR is sufficient to
`
`address LGE’s Petition because the issues presented are substantively identical.
`
`See Patent Owner’s Preliminary Response, IPR2020-00325 (Paper 8).
`
`Likewise, joinder will not negatively impact the TCT IPR trial schedule.
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`LGE expressly consents to the existing trial schedule. Further, as described below,
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`LGE agrees to take an “understudy” role to TCT in the joined proceeding. See,
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`e.g., Apple Inc. v. INVT SPE LLC, IPR2019-00958, Paper 9 at 6–8 (PTAB May 30,
`
`2019) (granting motion for joinder where the movant presented a substantively
`
`identical petition and agreed to take an “understudy” role in the joined
`
`10
`
`
`
`
`Motion for Joinder, IPR2021-00581
`LG Electronics, Inc. et al. v. Ancora Techs.
`
`
`proceeding); Intel Corp. v. Alacritech, Inc., IPR2018-01352, Paper 11 at 3–5
`
`(PTAB Jan. 8, 2019) (same).
`
`Finally, LGE’s Petition relies on an expert who endorses and adopts the
`
`analysis of TCT’s expert in the TCT petition. See Ex.1015. Therefore, joinder will
`
`not increase the complexity of the proceeding.
`
`iv. Factor 4: Procedures to simplify briefing and discovery
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`LGE agrees to take an “understudy” role in the joined proceeding, so long as
`
`TCT remains a party and active participant in the proceeding. To be clear, LGE
`
`only contemplates assuming the role of primary petitioner if (i) TCT is terminated
`
`as a party to the proceeding, or (ii) TCT ceases participating in the proceeding such
`
`that the proceeding is no longer “meaningfully adversarial,” contrary to the public
`
`interest. See ZTE (USA), Inc., et al. v. CyWee Group Ltd., IPR2019-00143, Paper
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`50 at 7-9 (PTAB July 17, 2020) (allowing a joinder petitioner to assume the role of
`
`primary petitioner with respect to a motion to amend because the “trial no longer
`
`appears to be meaningfully adversarial” given the primary petitioner’s decision not
`
`to oppose revised amended claims).
`
`As an understudy, LGE agrees to consolidated filings for all substantive
`
`papers and to consolidated discovery in the joined proceeding. With respect to
`
`consolidated filings, any papers jointly submitted by petitioners will not exceed the
`
`normal page limits for a single party set forth in the rules. LGE, when in the
`
`11
`
`
`
`
`Motion for Joinder, IPR2021-00581
`LG Electronics, Inc. et al. v. Ancora Techs.
`
`
`understudy role, will not file, or request to file, any separate briefs beyond the
`
`consolidated filings. Consolidated discovery is also appropriate given that LGE’s
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`expert has reviewed and adopted TCT’s expert declaration. As such, only TCT’s
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`expert need be deposed. In the event the TCT settles and its expert is not available
`
`for deposition, LGE will make its expert available for deposition. LGE will not
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`request additional cross-examination or re-direct time, thus ensuring that discover
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`be completed within the timeframe normally allotted by the rules
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`If the HTC joinder petition is also instituted, LGE will cooperate with HTC
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`to determine who will lead the case in the event that the original petitioners settle.
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`Additionally, with respect to any oral hearing, TCT will be responsible for
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`the presentation before the Board. LGE, when in the understudy role, will not
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`request any additional time to independently argue before the Board or attempt to
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`submit its own demonstratives.1
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`Accordingly, if joinder is granted, briefing and discovery in the joined
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`proceeding will be no more complex than if LGE had never been joined.
`
`
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`1 While LGE will not materially participate in calls with the Board, depositions,
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`and any oral hearing, LGE anticipates that its counsel will attend such events.
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`Additionally, LGE’s understudy role does not foreclose communication between
`
`LGE and other petitioners in the TCT IPR.
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`12
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`
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`Consolidated briefing and discovery will ensure a simplified and efficient joined
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`Motion for Joinder, IPR2021-00581
`LG Electronics, Inc. et al. v. Ancora Techs.
`
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`proceeding. As such, this factor also favors joinder.
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`IV. CONCLUSION
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`For the reasons above, LGE respectfully requests that the Board (i) institute
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`LGE’s concurrently filed Petition for Inter Partes Review of U.S. Patent No.
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`6,665,941; and (ii) grant joinder with TCT Corporation v. Ancora Optics, LLC,
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`Case No. IPR2020-01609.
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`
`
`
`
`Dated: February 23, 2021
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
`
`
`Customer No. 27683
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`
`
`
`Respectfully submitted,
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`
`
`
`
`
`
`
`
`/David L. McCombs/
`David L. McCombs
`Lead Counsel for Petitioner
`Reg. No. 32,271
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`13
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`
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`Motion for Joinder, IPR2021-00581
`LG Electronics, Inc. et al. v. Ancora Techs.
`
`
`
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on the date below a copy of this
`
`MOTION FOR JOINDER UNDER 35 U.S.C § 315(c), 37 C.F.R. §§ 42.22, AND
`
`42.122(b), was served by U.S. Priority Mail Express delivery service on the
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`Patent Owner at the correspondence address of record for the subject patent as
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`follows:
`
`VENABLE LLP
`P.O. BOX 34385
`WASHINGTON, DC 20043-9998
`
`
`and via electronic mail to the attorneys of record for Plaintiff in the concurrent
`
`litigation matter:
`
`William E. Thomson, Jr., wthomson@brookskushman.com
`Marc Lorelli, mlorelli@brookskushman.com
`John P. Rondini, jrondini@brookskushman.com
`Mark A. Cantor, mcantor@brookskushman.com
`John S. LeRoy, jleroy@brookskushman.com
`ANCC0119L@brookskushman.com
`
`BROOKS KUSHMAN P.C.
`601 S. Figueroa Street, Suite 2080
`Los Angeles, California 90017-5780
`
`Dated: February 23, 2021
`
`
`
`
`
`
`
`
`
`/David L. McCombs/
`David L. McCombs
`Reg. No. 32,271
`
`
`
`14
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`
`
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