Trials@uspto.gov
`571-272-7822
`
`
`Paper 8
`Entered: March 22, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TCT MOBILE (US) INC.,
`HUIZHOU TCL MOBILE COMMUNICATION CO. LTD., and
`SHENZHEN TCL CREATIVE CLOUD TECHNOLOGY CO., LTD.,
`Petitioner,
`v.
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`
`
`IPR2020-01609, IPR2021-00570, IPR2021-00581,
`IPR2021-00583, IPR2021-006631
`Patent 6,411,941 B1
`
`
`Before THU A. DANG, JONI Y. CHANG, and KEVIN W. CHERRY,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding and
`Setting Expedited Date for Patent Owner Preliminary Response
`37 C.F.R. § 42.5
`
`
`1 This Order applies to each of the above-listed proceedings. We
`exercise our discretion to issue one Order to be filed in each
`proceeding. Although each proceeding has a different Petitioner, we
`list only the Petitioner for IPR2020-01609 on the front page of this
`Order for efficiency. The parties are not authorized to use this heading
`style in any subsequent papers.
`
`
`571-272-7822
`
`
`Paper 8
`Entered: March 22, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TCT MOBILE (US) INC.,
`HUIZHOU TCL MOBILE COMMUNICATION CO. LTD., and
`SHENZHEN TCL CREATIVE CLOUD TECHNOLOGY CO., LTD.,
`Petitioner,
`v.
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`
`
`IPR2020-01609, IPR2021-00570, IPR2021-00581,
`IPR2021-00583, IPR2021-006631
`Patent 6,411,941 B1
`
`
`Before THU A. DANG, JONI Y. CHANG, and KEVIN W. CHERRY,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding and
`Setting Expedited Date for Patent Owner Preliminary Response
`37 C.F.R. § 42.5
`
`
`1 This Order applies to each of the above-listed proceedings. We
`exercise our discretion to issue one Order to be filed in each
`proceeding. Although each proceeding has a different Petitioner, we
`list only the Petitioner for IPR2020-01609 on the front page of this
`Order for efficiency. The parties are not authorized to use this heading
`style in any subsequent papers.
`
`
`
`IPR2020-01609, IPR2021-00570, IPR2021-00581,
`IPR2021-00583, IPR2021-00663
`Patent 6,411,941 B1
`
`
`TCT Mobile (US) Inc., Huizhou TCL Mobile Communication Co.,
`Ltd., and Shenzhen TCL Creative Cloud Technology Co., Ltd. (collectively,
`“TCT”) filed a Petition in IPR2020-01609 (“the ’1609 IPR”), requesting an
`inter partes review (“IPR”) of claims 1−3, 6−14, and 16 (“the challenged
`claims”) of U.S. Patent No. 6,411,941 B1 (Ex. 1001, “the ’941 patent”).
`Paper 12 (“Pet.”), 1. Ancora Technologies, Inc. (“Ancora” or “Patent
`Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). Upon
`review of the Petition and Patent Owner Preliminary Response, we
`determined that TCT has established a reasonable likelihood that it would
`prevail with respect to at least one claim. Therefore, we instituted a review
`as to all of the challenged claims of the ’941 patent and all of the asserted
`grounds of unpatentability on February 16, 2021. Paper 7.
`Within one month from institution, HTC Corporation and HTC
`America, Inc. (collectively, “HTC”) filed a Petition in IPR2021-00570 (“the
`’570 IPR”); LG Electronics, Inc. and LG Electronics U.S.A., Inc.
`(collectively, “LG”) filed a Petition in IPR2021-00581 (“the ’581 IPR”);
`Samsung Electronics, Co., Ltd. and Samsung Electronics America, Inc.
`(collectively, “Samsung”) filed a Petition in IPR2021-00583 (“the ’583
`IPR”); and Sony Mobile Communications AB, Sony Mobile
`Communications, Inc., Sony Electronics Inc., and Sony Corporation
`(collectively, “Sony”) filed a Petition in IPR2021-00663 (“the ’663 IPR”).
`Pursuant to 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42. 122(b),
`each of HTC, LG, Samsung, and Sony (collectively, “Joinder Petitioners”)
`timely filed a Motion for Joinder in each of their respective IPRs
`
`
`2 We cite to the record in IPR2020-01609, unless otherwise noted.
`
`2
`
`
`
`IPR2020-01609, IPR2021-00570, IPR2021-00581,
`IPR2021-00583, IPR2021-00663
`Patent 6,411,941 B1
`
`(collectively, “Joinder IPRs”), seeking to join TCT as a party to the ’1609
`IPR. In their Motions, Joinder Petitioners indicate that their Petitions
`(“me-too” Petitions) are substantively identical to the TCT Petition,
`challenging the same claims of the same patent based on the same grounds
`of unpatentability and relying on the same prior art references and the
`substantially identical expert declaration.
`On March 19, 2021, Judges Dang, Chang, and Cherry held a
`conference call with Ancora, TCT, and the Joinder Petitioners. A court
`reporter was present on the conference call.3
`During the conference call, TCT and Ancora requested authorization
`to file a Joint Motion to Terminate the ’1609 IPR. Ancora also requested
`that we should terminate the ’1609 IPR before deciding the Joinder Motions.
`To support its position, Ancora argued that (1) it has discretionary denial
`issues concerning each Joinder Petition, and (2) because the Preliminary
`Responses in the Joinder IPRs are due in approximately three months and
`the Decisions on Institution are due in approximately six months, Ancora
`would be unduly prejudiced by the delay.
`The Joinder Petitioners argued that we should not grant any Motion to
`Terminate the ’1609 IPR until after we decide the Joinder Petitions and
`Motions.
`For efficiency, Ancora agreed to present its arguments concerning
`discretionary denial in its Oppositions to the Joinder Motions, and present its
`substantive arguments in its Preliminary Responses to the Joinder Petition.
`
`
`3 We authorize the parties to file the court reporter’s transcript as an exhibit
`in each of the above-identified proceedings.
`
`3
`
`
`
`IPR2020-01609, IPR2021-00570, IPR2021-00581,
`IPR2021-00583, IPR2021-00663
`Patent 6,411,941 B1
`
`
`Upon consideration of the parties’ arguments, we authorize TCT and
`Ancora to file a Joint Motion to Terminate the ’1609 IPR, as set forth below.
`We also authorize Ancora a 7-page extension for its Oppositions, and a
`one-day time extension for filing its Opposition in the ’570 IPR.
`We further authorize (1) each Joinder Petitioner to file a 7-page Reply
`within 10 business days from the filing of the Opposition, and (2) Ancora to
`file a 7-page Sur-reply within 10 business from the filing of the Reply.
`In addition, to minimize any delay in deciding the Joint Motion to
`Terminate, the Joinder Motions, and the Institution Decision, we set an
`expedited date for filing the Patent Owner Preliminary Response in each
`Joinder IPR. See 37 C.F.R. § 42.5(c)(1) (noting that times set by rules are
`default and may be modified by order of the Board, taking into account
`applicable statutory pendency goals). In view of the circumstances of these
`proceedings before us, an expedited date for the Patent Owner Preliminary
`Responses in the Joinder IPRs will assist in administering the proceedings in
`a just, speedy and efficient manner. 37 C.F.R. § 42.1(b).
`
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that TCT and Ancora are authorized to file a Joint Motion
`to Terminate the ’1609 IPR, within 10 business days from this Order; the
`Motion to Terminate should explain why termination is appropriate and
`provide the status of any related district court cases or USPTO proceedings
`involving the ’941 patent; TCT and Ancora should be mindful of the
`requirements set forth in 35 U.S.C. § 317(b) and 37 C.F.R § 42.74, that any
`
`4
`
`
`
`IPR2020-01609, IPR2021-00570, IPR2021-00581,
`IPR2021-00583, IPR2021-00663
`Patent 6,411,941 B1
`
`agreement, including any collateral agreement, between the parties made in
`connection with the termination of the proceeding must be in writing and a
`fully executed copy must be filed with the Board as an exhibit to the Motion
`to Terminate; the Motion to Terminate must include a statement certifying
`that TCT and Ancora have complied fully with 37 C.F.R. § 42.74(b) by
`providing any such agreements or understandings, the agreements or
`understandings provided reflect final settlement and resolution of all
`disputes in this matter between the parties, and there are no other collateral
`agreements or understandings made in connection with, or in contemplation
`of, the termination sought; this would include the license agreement as well
`as any written settlement agreements;
`FURTHER ORDERED that TCT and Ancora are authorized to file,
`within 10 business days from this Order, a request to treat the settlement
`agreement as business confidential information and to file the settlement
`agreement as “Parties and Board Only” (see 37 C.F.R. § 42.74(c));
`FURTHER ORDERED that Ancora’s request for a 7-page extension
`for its Opposition to each Joinder Motion, and for a one-day time extension
`for filing its Opposition in the ’570 IPR is granted;
`FURTHER ORDERED that each Joinder Petitioner is authorized to
`file a 7-page Reply within 10 business days from the filing of the Opposition
`in their respective IPRs;
`FURTHER ORDERED that Ancora is authorized to file a 7-page
`Sur-reply within 10 business from the filing of the Reply; and
`
`
`5
`
`
`
`IPR2020-01609, IPR2021-00570, IPR2021-00581,
`IPR2021-00583, IPR2021-00663
`Patent 6,411,941 B1
`
`
`FURTHER ORDERED that Ancora may file a Patent Owner
`Preliminary Response not later than April 23, 2021, in each of the Joinder
`IPRs (IPR2021-00570, IPR2021-00581, IPR2021-00583, and IPR2021-
`00663).
`
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`6
`
`
`
`IPR2020-01609, IPR2021-00570, IPR2021-00581,
`IPR2021-00583, IPR2021-00663
`Patent 6,411,941 B1
`
`PETITIONERS
`
`TCT for IPR2020-01609:
`
`John Schnurer
`Yun (Louise) Lu
`Kyle Canavera
`PERKINS COIE LLP
`perkinsserviceTCL-Ancora-IPR@perkinscoie.com
`
`Bradford Cangro
`
`PV LAW LLP
`bradford.cangro@pvuslaw.com
`
`HTC for IPR2021-00570:
`
`Irfan Lateef
`Brian Claassen
`Daniel Kiang
`
`KNOBBE MARTENS
`Boxhtc57@knobbe.com
`
`LG for IPR2021-00581:
`
`David McCombs
`Gregory Huh
`
`HAYNES AND BOONE, LLP
`david.mccombs.ipr@haynesboone.com
`gregory.huh.ipr@haynesboone.com
`
`Samsung for IPR2021-00583:
`
`Anupam Sharm
`Peter Chen
`Gregory Discher
`
`7
`
`
`
`IPR2020-01609, IPR2021-00570, IPR2021-00581,
`IPR2021-00583, IPR2021-00663
`Patent 6,411,941 B1
`
`Sinan Utku
`Richard Rainey
`
`COVINGTON & BURLING LLP
`samsung-ancora-IPR@cov.com
`
`Sony for IPR2021-00663:
`
`Gregory Gewirtz
`Jonathan David
`
`LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK, LLP
`litigation@lernerdavid.com
`ggewirtz@lernerdavid.com
`
`
`PATENT OWNER:
`
`Nicholas Peters
`David Gosse
`Paul Henkelmann
`
`FITCH, EVEN, TABIN & FLANNERY LLP
`ntpete@fitcheven.com
`dgosse@fitcheven.com
`phenkelmann@fitcheven.com
`
`John Rondini
`John LeRoy
`Marc Lorelli
`
`BROOKS KUSHMAN P.C.
`ancc0120IPR@brookskushman.com
`
`8
`
`
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