From: Goldberg, Joshua [mailto:Joshua.Goldberg@finnegan.com]
`Sent: Tuesday, May 10, 2016 1:18 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: John Murphy <murphy@nelbum.com>; LGE-CCE-IPR <LGE-CCE-IPR@finnegan.com>; Gupta, Raj
`<Raj.Gupta@finnegan.com>; CCE-IPR <CCE-IPR@nelbum.com>; Kumar, Karthik
`<Karthik.Kumar@finnegan.com>
`Subject: IPR2015-01716 and IPR2016-00711
`
`
`Your Honors,
`
`
`Petitioner LG Electronics, Inc. respectfully requests a conference call to discuss Petitioner’s proposed
`motion under Rule § 42.20 for vacatur of the Board’s Decision on Joint Motion to Terminate (Paper 15)
`as to Patent Owner in instituted IPR2015-01716, and consideration of Petitioner’s Motion for Joinder
`(Paper 3) in pending IPR2016-00711.
`
`
`Sony Mobile Communications (USA) Inc. (“Sony”) filed IPR2015-01716 against Patent Owner’s U.S.
`Patent No. 8,848,556, which the Board instituted. Petitioner filed, after its bar date under 35 U.S.C.
`§315(b) but within one month after institution of IPR2015-01716, a copycat petition and motion for
`joinder to this proceeding in IPR2016-00711. Subsequently, Sony settled its dispute with Patent
`Owner. On Friday, March 25, 2016, they filed a joint motion to terminate IPR2015-01716, while
`Petitioner’s motion for joinder was still pending. On Monday, March 28, 2016, the Board terminated
`Sony’s IPR2015-01716. The Board has not yet ruled on Petitioner’s motion for joinder.
`
`
`Petitioner also independently filed a petition against the ’556 patent, IPR2016-00197. Because this
`independently filed petition closely tracked Sony's petition in IPR2015-01716, Petitioner expected it to
`be instituted for the same reasons as Sony's petition and was thus agreeable to Patent Owner’s request
`to terminate the copycat IPR2016-00711 proceeding in view of the Board’s termination of Sony’s
`IPR2015-01716. However, the Board later denied institution of Petitioner’s independent IPR petition on
`April 29, 2016, despite its similarity to Sony's petition.
`
`In light of this changed circumstance, Petitioner opposes termination of the copycat IPR2016-00711 as
`Patent Owner seeks, and instead wishes to move under Rule § 42.20 for (1) vacatur of the Decision on
`Joint Motion to Terminate (Paper 15) as to Patent Owner in instituted IPR2015-01716, and (2)
`consideration of Petitioner’s Motion for Joinder (Paper 3) in pending IPR2016-00711.
`
`
`Patent Owner seeks relief from the Board for the enforcement of the Board's oral order on April 27,
`2016 for the parties to file a Joint Motion to Dismiss IPR2016-00711. Alternatively, Patent Owner seeks
`other relief recommended by the Board for the termination of this proceeding. Patent Owner opposes
`Petitioner’s motion.
`
`
`On March 28, 2016, LG agreed not to oppose Patent Owner's request to terminate IPR2016-00711. The
`parties' requested a call with the Board at that time, but due to a panel not being named to this
`proceeding, a call was not scheduled with the Board until April 27, 2016. On the call with the Board,
`both parties agreed that the Motion for Joinder was moot because the proceeding it sought to join had
`been terminated. Within a few hours of the Board's April 27th order for the parties to file the Joint
`Motion to Dismiss, Patent Owner provided a draft of the Joint Motion to Dismiss to LG to obtain LG's
`consent to file. Patent Owner followed up with LG several times since April 27th to obtain LG's consent
`to file the Joint Motion to Dismiss. On May 9th, LG first notified Patent Owner that LG was changing its
`
`

`
`position that the Motion for Joinder was moot, and that LG would no longer agree to file the Joint
`Motion to Dismiss that was ordered by the Board.
`
`
`All parties are available for a call with the Board on Thursday between 2:00-6:30 pm ET.
`
`
`Regards,
`Joshua L. Goldberg, Counsel for Petitioner (IPR2016-00711)
`
`
`Joshua L. Goldberg
`Attorney at Law
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW, Washington, DC 20001-4413
`202.408.6092 | fax 202.408.4400 | joshua.goldberg@finnegan.com
`www.finnegan.com | Bio | LinkedIn | PTAB Guidebook
`
`
`
`
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