Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 7
`April 11, 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 IPR2017-01038
`Patent 9,189,437 B2
`____________
`
`
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review, Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. §§ 42.108, 42.122
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 7
`April 11, 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 IPR2017-01038
`Patent 9,189,437 B2
`____________
`
`
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review, Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. §§ 42.108, 42.122
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-01038
`Patent No. 9,189,437 B2
`
`
`Petitioner, LG Electronics USA, Inc., filed a Petition requesting inter
`partes review of claims 1–45 of U.S. Patent No. 9,189,437 B2 (Ex. 1003,
`“the ’437 patent”). Paper 1 (“Pet.”). Along with the Petition, LG filed a
`motion for joinder with IPR2016-01733, Samsung Electronics Co., LTD. v.
`Papst Licensing GMBH & Co. KG, a pending inter partes review involving
`the ’437 patent. Paper 3 (“Mot.”).1
`Patent Owner, Papst Licensing GMBH & Co. KG, filed a response to
`the Motion for Joinder indicating that it does not oppose the motion “on the
`condition that the consolidated proceeding is limited to the instituted
`grounds of IPR2016-01733, and subject to the conditions agreed to by LG in
`its motion.” Paper 6 (“Resp. to Mot.”). Patent Owner also indicated it
`waives its right to file a Preliminary Response in this proceeding in the event
`that we grant the Motion for Joinder. Id.
`For the reasons set forth below, we conclude that LG has shown that
`the Petition warrants institution of inter partes review of claims 1–45 of the
`’437 patent. This conclusion is consistent with our institution decision in
`IPR2015-01733. See Case No. IPR2016-01733, Paper 7. We exercise our
`discretion to join LG as a petitioner in IPR2016-01733.
`
`
`1 We note that the one-year time bar of 35 U.S.C. § 315(b) and 37 C.F.R.
`§ 42.101(b) does not apply to LG’s request for joinder with IPR2016-01733.
`See Mot. 3; 35 U.S.C. § 315(b) (“The time limitation set forth in the
`preceding sentence shall not apply to a request for joinder under subsection
`(c).”); 37 C.F.R. §§ 42.101(b), 42.122(b) (“The time period set forth in
`§ 42.101(b) shall not apply when the petition is accompanied by a request
`for joinder.”).
`
`
`
`IPR2017-01038
`Patent No. 9,189,437 B2
`
`
`I. BACKGROUND
`LG indicates that Patent Owner has asserted the ’437 patent in a suit
`
`filed in the U.S. District Court for the Eastern District of Texas. Resp. to
`Mot. 6–7. In addition, the ’437 patent is the subject of a pending inter
`partes review proceeding—IPR2016-01733. Id. at 5.
`In IPR2016-01733, filed by Samsung Electronics Co. Ltd. and
`Samsung Electronics America, Inc. (collectively, “IPR2016-01733
`Petitioners”), we instituted inter partes review of claims 1–45 of the
`’437 patent on the grounds of unpatentability asserted in the present Petition.
`Samsung Electronics Co., LTD. v. Papst Licensing GMBH & Co. KG, Case
`IPR2016-01733 (PTAB Feb. 8, 2017) (Paper 7) (“IPR2016-01733 Inst.
`Dec.”).
`
`II. PETITION FOR INTER PARTES REVIEW
`LG’s Petition is substantively the same as that filed in IPR2016-01733
`
`(Mot. 5). We incorporate our analysis from our institution decision in
`IPR2016-01733. IPR2016-01733 Inst. Dec. 2–40. For the same reasons, we
`determine that LG has demonstrated that the present Petition warrants
`institution of inter partes review of claims 1–45 based on the following
`grounds:
`
`Challenged Claim(s)
`
`Basis
`
`References
`
`1, 4–16, 18–31, 33–
`37, 41, 43, and 45
`
`§ 103(a) Aytac, the SCSI Specification, and
`Admitted Prior Art
`
`2, 3, 17, 39, 40, 42,
`and 44
`
`§ 103(a) Aytac, the SCSI Specification,
`Admitted Prior Art, and Adaptec
`
`
`
`IPR2017-01038
`Patent No. 9,189,437 B2
`
`
`Challenged Claim(s)
`
`13 and 45
`
`32
`
`38
`
`40
`
`Basis
`
`§ 103(a)
`
`References
`Aytac, the SCSI Specification,
`Admitted Prior Art, and TI Data
`Sheet
`§ 103(a) Aytac, the SCSI Specification,
`Admitted Prior Art, and Muramatsu
`
`Aytac, the SCSI Specification,
`Admitted Prior Art, TI Data Sheet,
`and TI Patent
`Aytac, the SCSI Specification,
`Admitted Prior Art, Adaptec, and TI
`Data Sheet
`
`§ 103(a)
`
`§ 103(a)
`
`
`
`III. MOTION FOR JOINDER
`In the Motion for Joinder, LG seeks to be joined as a party to
`
`IPR2016-01733. Mot. 5. LG filed the present Motion on March 6, 2017,
`within one month of our decision instituting inter partes review in IPR2016-
`01733. See IPR2016-01733 Inst. Dec.; Mot. Therefore, the Motion is
`timely under 37 C.F.R. § 42.122(b). See 37 C.F.R. § 42.122(b) (“Any
`request for joinder must be filed, as a motion under § 42.22, no later than
`one month after the institution date of any inter partes review for which
`joinder is requested.”).
`We agree with LG that joinder would not impact the substantive
`issues presented in IPR2016-01733. The grounds asserted in LG’s Petition
`that we determine above warrant institution of inter partes review are
`identical to the grounds on which we instituted review in IPR2016-01733—
`relying on the same prior art, evidence, and same arguments. See Mot. 11–
`14.
`
`
`
`IPR2017-01038
`Patent No. 9,189,437 B2
`
`
`In addition, based on LG’s representations related to scheduling and
`discovery, we are persuaded that joinder would have minimal impact on the
`procedural aspects of IPR2016–01733. Id. Therefore, we are persuaded that
`joinder would not require any adjustment to or delay in the existing schedule
`of IPR2016-01733, and would not prevent the trial in IPR2016-01733 from
`being completed within one year of institution.
`We conclude that LG has demonstrated that joinder would not unduly
`complicate or delay IPR2016-01733. We, likewise, are persuaded that
`joinder would increase efficiency by eliminating duplicative filings and
`discovery, and would reduce costs and burdens on the parties as well as the
`Board.
`Accordingly, we exercise our discretion to join LG as a petitioner in
`IPR2016-01733 subject to the representations made in the Motion for
`Joinder and the order below.
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that LG’s Motion for Joinder with IPR2016-01733 is
`granted;
`FURTHER ORDERED that LG Electronics, Inc. is joined as a
`petitioner in IPR2016-01733;
`FURTHER ORDERED that, pursuant to 37 C.F.R. § 42.71, the
`Petition is dismissed;
`FURTHER ORDERED that the instant proceeding, IPR2017-01038,
`is terminated under 37 C.F.R. § 42.72, and all further filings shall be made
`only in IPR2016-01733;
`
`
`
`IPR2017-01038
`Patent No. 9,189,437 B2
`
`
`FURTHER ORDERED that the asserted grounds of unpatentability on
`which a trial was instituted in IPR2016-01733 are unchanged;
`FURTHER ORDERED that the Scheduling Order for IPR2016-01733
`(Paper 8) shall continue to govern IPR2016-01733;
`FURTHER ORDERED that all filings by LG in IPR2016-01733 shall
`be consolidated with the filings of the other petitioners, unless the filing
`involves an issue unique to LG or a point of disagreement related to the
`consolidated filing, and the consolidated filings shall comply with the page
`limits set forth in 37 C.F.R. § 42.24;
`FURTHER ORDERED that LG is bound by any discovery
`agreements between Patent Owner and the other petitioners in IPR2016-
`01733 and that LG shall not seek any discovery beyond that sought by the
`other petitioners in IPR2016-01733;
`FURTHER ORDERED that all petitioners in IPR2016-01733 shall
`collectively designate attorneys to conduct the cross-examination of any
`witness produced by Patent Owner and the redirect examination of any other
`witness, within the timeframes set forth in 37 C.F.R. § 42.53(c) or agreed to
`by the parties;
`FURTHER ORDERED that all petitioners in IPR2016-01733 shall
`collectively designate attorneys to present at the oral hearing, if requested
`scheduled, in a consolidated argument;
`FURTHER ORDERED that the case caption in IPR2016-01733 shall
`be changed to reflect the joinder of LG as a petitioner in accordance with the
`attached example; and
`FURTHER ORDERED that a copy of this Decision be entered into
`the file of IPR2016-01733.
`
`
`
`IPR2017-01038
`Patent No. 9,189,437 B2
`
`
`
`For PETITIONER:
`
`Herbert Finn
`Jonathan Giroux
`GREENBERG TRAURIG, LLP
`finnh@gtlaw.com
`girouxj@gtlaw.com
`
`Brian C. Rupp
`Carrie A. Beyer
`Nikola Colic
`DRINKER BIDDLE & REATH LLP
`Brian.Rupp@dbr.com
`Carrie.Beyer@dbr.com
`Nick.Colic@dbr.com
`
`
`
`
`
`
`
`
`
`For PATENT OWNER:
`
`Nicholas T. Peters
`Paul Henkelmann
`Joseph Marinelli
`Nicole Little
`FITCH, EVEN, TABIN & FLANNERY LLP
`ntpete@fitcheven.com
`phenkelmann@fitcheven.com
`jmarinelli@fitcheven.com
`nlittle@fitcheven.com
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO., KG,
`Patent Owner.
`____________
`
`Case IPR2016-017331
`Patent 9,189,437 B2
`____________
`
`
`
`
`
`
`
`
`1 LG Electronics, Inc., who filed a Petition in IPR2017-01038, has been
`joined as a petitioner in this proceeding.
`
`
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