throbber
Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 9
` Entered: May 24, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`_______________
`
`Case IPR2017-00672
`Patent 8,966,144 B2
`_______________
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. §§ 42.108 and 42.122(b)
`
`

`

`IPR2017-00672
`Patent 8,966,144 B2
`
`
`I.
`
`INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–36, 38–56, 58–65, 67–74, and 77–87 of U.S. Patent No.
`8,966,144 B2 (“the ’144 patent”). Paper 1 (“Pet.”). Petitioner also
`concurrently filed a Motion for Joinder, seeking to join this proceeding with
`Panasonic Corp. et al., v. Papst Licensing GmbH & Co., KG, Case
`IPR2016-01225 (“the Panasonic IPR”). Paper 3 (“Mot.”). Patent Owner did
`not file a Preliminary Response; nor does it oppose Petitioner’s Motion for
`Joinder. Paper 8.
`For the reasons set forth below, we institute an inter partes review of
`claims 1–36, 38–56, 58–65, 67–74, and 77–87 of the ’144 patent, and grant
`Petitioner’s Motion for Joinder.
`
`II.
`
`INSTITUTION OF INTER PARTES REVIEW
`On December 15, 2016, we instituted a trial in IPR2016-01225 on the
`ground that claims 1–36, 38–56, 58–65, 67–74, and 77–87 are unpatentable
`under § 103(a) as obvious over the combination of McNeill, the SCSI
`Specification, and the Admitted Prior Art. Panasonic IPR, slip. op. at 35
`(PTAB Dec. 15, 2016) (Paper 10). The instant Petition presents the same
`grounds of unpatentability, the same prior art, and the same declarant
`testimony as the petition in the Panasonic IPR. Pet. 11−13; Mot. 5–6. In
`view of the identity of the grounds in the instant Petition and in the
`Panasonic IPR petition, and for the same reasons stated in our Decision on
`Institution in the Panasonic IPR, we institute inter partes review in this
`proceeding on the same grounds discussed above and for the claims we
`instituted inter partes review in the Panasonic IPR.
`
`
`
`2
`
`

`

`IPR2017-00672
`Patent 8,966,144 B2
`
`III. GRANT OF MOTION FOR JOINDER
`
`Joinder in inter partes review is subject to the provisions of 35 U.S.C.
`§ 315(c):
`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition under
`section 311 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the time for filing
`such a response, determines warrants the institution of an inter
`parties review under section 314.
`As the moving party, Petitioner bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
`grounds of unpatentability asserted in the petition; and (3) explain what
`impact (if any) joinder would have on the trial schedule for the existing
`review. See Frequently Asked Question H5, https://www.uspto.gov/patents-
`application-process/patent-trial-and-appeal-board/ptab-e2e-frequently-
`asked-questions.
`Petitioner asserts it has grounds for standing because, in accordance
`with 35 U.S.C. § 315(c), Petitioner filed a Motion for Joinder concurrently
`with the Petition and not later than one month after institution of the
`Panasonic IPR. Mot. 6. Patent Owner does not oppose Petitioner’s Motion
`for Joinder based on the condition that the instant proceeding follows the
`same schedule of the Panasonic IPR. Paper 8. We find that the Motion for
`Joinder is timely.
`
`We also find that Petitioner has met its burden of showing that joinder
`is appropriate. The Petition here is substantively identical to the petition in
`
`
`
`3
`
`

`

`IPR2017-00672
`Patent 8,966,144 B2
`
`the Panasonic IPR. Mot. 11–13. The evidence also is identical, including
`the reliance on the same Declaration of Paul F. Reynolds, Ph.D. Id. at 11.
`
`Petitioner further has shown that the trial schedule will not be affected
`by joinder. Mot. 11−12. No changes in the schedule are anticipated or
`necessary, and the limited participation, if at all, of Petitioner will not impact
`the timeline of the ongoing trial. We limit Petitioner’s participation in the
`joined proceeding such that Petitioner shall require prior authorization from
`the Board before filing any further paper. This arrangement promotes the
`just and efficient administration of the ongoing trial and the interests of
`Petitioner and Patent Owner.
`
`IV. ORDER
`
`In view of the foregoing, it is
`ORDERED that IPR2017-00672 is hereby instituted for the ground
`that claims 1–36, 38–56, 58–65, 67–74, and 77–87 are unpatentable under
`§ 103(a) as obvious over the combination of McNeill, the SCSI
`Specification, and the Admitted Prior Art.
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2016-01225 is granted;
`FURTHER ORDERED that the grounds on which trial in
`IPR2016-01225 were instituted are unchanged and no other grounds are
`included in the joined proceeding;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2016-01225 (Paper 11) and schedule changes agreed-to by the parties in
`IPR2016-01225 (pursuant to the Scheduling Order) shall govern the
`schedule of the joined proceeding;
`
`
`
`4
`
`

`

`IPR2017-00672
`Patent 8,966,144 B2
`
`
`FURTHER ORDERED that, throughout the joined proceeding, all
`filings in IPR2016-01225 will be consolidated and no filing by Petitioner
`Apple alone will be allowed without prior authorization by the Board;
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2016-01225;
`FURTHER ORDERED that IPR2017-00672 is terminated under
`37 C.F.R. § 42.72 and all further filings in the joined proceeding are to be
`made in IPR2016-01225; and
`FURTHER ORDERED that the case caption in IPR2016-01225 shall
`be changed to reflect joinder with this proceeding in accordance with the
`attached example.
`
`
`
`
`
`
`5
`
`

`

`IPR2017-00672
`Patent 8,966,144 B2
`
`For PETITIONER:
`
`Herbert H. Finn
`Jonathan E. Giroux
`GREENBERG TRAURIG, LLP
`LG-PAPST-IPR@gtlaw.com
`finnh@gtlaw.com
`girouxj@gtlaw.com
`
`
`
`PATENT OWNER:
`
`Nicholas T. Peters
`Paul Henkelmann
`FITCH, EVEN, TABIN & FLANNERY LLP
`ntpete@fitcheven.com
`phenkelmann@fitcheven.com
`
`Anthony L. Meola
`SCHMEISER, OLSEN & WATTS, LLP
`ameola@iplawusa.com
`
`
`
`
`
`6
`
`

`

`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 9
` Entered: May 24, 2017
`
`Example Case Caption for Joined Proceeding
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`
`
`CANON INC., CANON U.S.A., INC.,
`CANON FINANCIAL SERVICES, INC., FUJIFILM CORPORATION,
`FUJIFILM HOLDINGS AMERICA CORPORATION,
`FUJIFILM NORTH AMERICA CORPORATION, JVC KENWOOD
`CORPORATION, JVCKENWOOD USA CORPORATION,
`NIKON CORPORATION, NIKON INC., OLYMPUS CORPORATION,
`OLYMPUS AMERICA INC., PANASONIC CORPORATION,
`PANASONIC CORPORATION OF NORTH AMERICA,
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`LG ELECTRONICS INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`_______________
`
`Case IPR2016-012251
`Patent 8,966,144 B2
`_______________
`
`
`
`1 Case IPR2017-00672, filed by LG Electronics Inc., has been joined with
`this proceeding.
`
`

`

`IPR2017-00672
`
`IPR2017-00672
`Patent 8,966,144 B2
`Patent 8,966,144 B2
`
`
`
`
`
`8
`
`

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