Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Entered: April 20, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`v.
`GESTURE TECHNOLOGY PARTNERS, LLC,
`Patent Owner.
`
`IPR2022-00361
`Patent 8,194,924 B2
`
`
`
`
`
`
`
`
`
`Before PATRICK R. SCANLON, GREGG I. ANDERSON, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`DOUGAL, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 7
`Entered: April 20, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`v.
`GESTURE TECHNOLOGY PARTNERS, LLC,
`Patent Owner.
`
`IPR2022-00361
`Patent 8,194,924 B2
`
`
`
`
`
`
`
`
`
`Before PATRICK R. SCANLON, GREGG I. ANDERSON, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`DOUGAL, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2022-00361
`Patent 8,194,924 B2
`
`I.
`INTRODUCTION
`A. Background and Summary
`Petitioner, Google LLC, requests that we institute an inter partes
`review to challenge the patentability of claims 1–14 (the “challenged
`claims”) of U.S. Patent 8,194,924 B2 (Ex. 1001, “the ’924 patent”). Paper 1
`(“Petition” or “Pet.”). Concurrently with its Petition, Petitioner filed a
`Motion for Joinder with Apple Inc. v. Gesture Technology Partners, LLC,1
`Case IPR2021-00923 (“the Apple IPR”). Paper 3 (“Mot.”). Petitioner
`represents that the petitioner in the Apple IPR— Apple Inc.—does not
`oppose the Motion for Joinder. Mot. 1. Patent Owner, Gesture Technology
`Partners, LLC, did not file a response or an opposition to the Motion.
`Applying the standard set forth in 35 U.S.C. § 314(a), which requires
`demonstration of a reasonable likelihood that Petitioner would prevail with
`respect to at least one challenged claim, we institute an inter partes review.2
`Further, for the reasons set forth below, we grant the Motion for Joinder.
`B. Related Matters
`The parties identify these related matters: Gesture Technology
`Partners, LLC v. Huawei Device Co., Ltd., No. 2:21-cv-00040 (E.D. Tex.);
`Gesture Technology Partners, LLC v. Samsung Electronics Co., No. 2:21-
`cv-00041 (E.D. Tex.); Gesture Technology Partners, LLC v. Apple Inc., No.
`6:21-cv-00121 (W.D. Tex.); Gesture Technology Partners, LLC v. Lenovo
`Group Ltd., No. 6:21-cv-00122 (W.D. Tex.); and Gesture Technology
`
`
`1 Since the filing of Google’s Motion, IPR2022-00093 (LG Electronics, Inc.
`and LG Electronics U.S.A., Inc.) has been joined with this proceeding. See
`IPR2021-00923, Paper 13.
`2 Our findings and conclusions at this stage are preliminary, and thus, no
`final determinations are made.
`
`2
`
`
`
`IPR2022-00361
`Patent 8,194,924 B2
`Partners, LLC v. LG Electronics, Inc., No. 6:21-cv-00123 (W.D. Tex.)
`(transferred to D. NJ as No. 2:21-cv-19234). Pet. 81; Paper 5, 1. Patent
`Owner identifies these related Board proceedings: IPR2021-00917;
`IPR2021-00920; IPR2021-00921; IPR2021-00922; IPR2021-00923;
`IPR2021-01255; IPR2022-00090; IPR2022-00091; IPR2022-00092;
`IPR2022-00093; IPR2022-00359; IPR2022-00360; and IPR2022-00362.
`Paper 5, 1–3. Patent Owner identifies these related Ex Parte
`Reexaminations: No. 90/014,900; No. 90/014,901; No. 90/014,902; and No.
`90/014,903. Id. at 3.
`In the Apple IPR, we instituted an inter partes review of claims 1–14
`of the ’924 patent as unpatentable on the following grounds:
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1–6, 11, 14
`103(a)3
`Mann,4 Numazaki5
`7, 8, 10, 12, 13
`103(a)
`Mann, Numazaki, Amir6
`6, 9
`103(a)
`Mann, Numazaki, Aviv7
`See Apple IPR, Paper 10 (PTAB Dec. 6, 2021) (“Apple Dec.”).
`
`
`II. INSTITUTION OF INTER PARTES REVIEW
`The Petition in this proceeding asserts the same grounds of
`unpatentability as the ones on which we instituted review in the Apple IPR.
`Compare Pet. 7, with Apple Dec. 5. Indeed, Petitioner contends that the
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`Because the challenged patent claims priority before March 16, 2013, we
`refer to the pre-AIA version.
`4 Canadian Published Patent Application 2,237,939, published Aug. 28,
`1998 (“Mann”) (Ex. 1004).
`5 U.S. Patent 6,144,366, issued Nov. 7, 2000 (“Numazaki”) (Ex. 1005).
`6 U.S. Patent 6,539,100 B1, issued Mar. 25, 2003 (“Amir”) (Ex. 1006).
`7 U.S. Patent 5,666,157, issued Sept. 9, 1997 (“Aviv”) (Ex. 1007).
`
`3
`
`
`
`IPR2022-00361
`Patent 8,194,924 B2
`“[P]etition and the Apple IPR are substantively identical; they contain the
`same grounds (based on the same prior-art combinations and supporting
`evidence) against the same claims.” Mot. 1; see also id. at 3–5. This includes
`relying on the same expert declaration as the Apple IPR. Id. at 5.
`Patent Owner did not file a Preliminary Response.
`For the same reasons set forth in our institution decision in the Apple
`IPR, we determine that Petitioner has shown a reasonable likelihood that at
`least one claim is unpatentable. We therefore institute trial as to all
`challenged claims on all grounds stated in the Petition.
`
`
`III. MOTION FOR JOINDER
`The statutory provision governing joinder in inter partes review
`proceedings (35 U.S.C. § 315(c)) reads:
`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 partes
`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: set forth the reasons joinder is appropriate; identify any new grounds
`of unpatentability asserted in the petition; and explain what impact (if any)
`joinder would have on the trial schedule for the existing review. See Kyocera
`Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24,
`2013).
`Petitioner timely filed the Motion no later than one month after
`institution of the Apple IPR. See 37 C.F.R. § 42.122(b). As noted, the
`
`4
`
`
`
`IPR2022-00361
`Patent 8,194,924 B2
`Petition in this case asserts the same unpatentability grounds on which we
`instituted review in the Apple IPR. See Mot. 1. Petitioner also relies on the
`same prior art analysis and expert testimony submitted by the Apple
`petitioner. See id. at 5. Indeed, the Petition is nearly identical to the petition
`filed by the Apple petitioner. See id. Thus, this inter partes review does not
`present any ground or matter not already at issue in the Apple IPR. Id.
`If joinder is granted, Petitioner agrees to assume an “‘understudy’
`role” and agrees that this role “shall apply so long as the current petitioner in
`IPR2021-00923 remains an active party.”8 Id. at 7. Petitioner further
`represents that it will not advance any arguments separate from those
`advanced by Apple in the consolidated filings. Id. Because Petitioner
`expects to participate only in a limited capacity, Petitioner submits that
`joinder will not impact the trial schedule for the Apple IPR. Id. at 6.
`Patent Owner did not file an Opposition to the Motion for Joinder.
`Based on the above, we determine that joinder with the Apple IPR is
`appropriate under the circumstances. Accordingly, we grant Petitioner’s
`Motion for Joinder.
`
`
`
`
`
`
`
`8 As noted previously, Apple Inc. was the initial Petitioner in IPR2021-
`00923, however, since the filing of Google’s Motion, IPR2022-00093 (LG
`Electronics, Inc. and LG Electronics U.S.A., Inc.) has been joined with this
`proceeding. See IPR2021-00923, Paper 13. LG Electronics, Inc. and LG
`Electronics U.S.A., Inc. have also agreed to take an understudy role to Apple
`Inc. See id. at 10. Thus, Google LLC will assume an “understudy role”
`unless and until Apple Inc., LG Electronics, Inc., and LG Electronics
`U.S.A., Inc. are no longer parties to the inter partes review.
`
`5
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`
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`IPR2022-00361
`Patent 8,194,924 B2
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, inter partes review of claims 1–14 of U.S. Patent
`8,194,924 B2 is instituted on all grounds in the Petition;
`FURTHER ORDERED that the Motion for Joinder with IPR2021-
`00923 is granted;
`FURTHER ORDERED that IPR2022-00361 is joined with IPR2021-
`00923, pursuant to 37 C.F.R. §§ 42.72, 42.122, wherein Petitioner will
`maintain a secondary role in the proceeding, unless and until the current
`IPR2021-00923 petitioners cease to participate as a petitioner in the inter
`partes review;
`FURTHER ORDERED that the Scheduling Order in place for
`IPR2021-00923 (Paper 11) remains unchanged, and shall govern the joined
`proceeding;
`FURTHER ORDERED that all future filings in the joined proceeding
`are to be made only in IPR2021-00923;
`FURTHER ORDERED that the case caption in IPR2021-00923 shall
`be changed to reflect joinder of Google LLC as a petitioner in accordance
`with the below example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2021-00923.
`
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`6
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`IPR2022-00361
`Patent 8,194,924 B2
`
`
`Example Caption
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`APPLE, INC., LG ELECTRONICS, INC.,
`LG ELECTRONICS U.S.A., INC., and GOOGLE LLC,
`Petitioner,
`v.
`GESTURE TECHNOLOGY PARTNERS, LLC,
`Patent Owner.
`_______________
`
`IPR2021-009239
`Patent 8,194,924 B2
`_______________
`
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`9 IPR2022-00093 (LG Electronics, Inc. and LG Electronics U.S.A., Inc.) and
`IPR2022-00361 (Google LLC) have been joined with this proceeding.
`
`7
`
`
`
`IPR2022-00361
`Patent 8,194,924 B2
`FOR PETITIONER:
`
`Erika Arner
`Daniel Cooley
`Mingji Jin
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`erika.arner@finnegan.com
`daniel.cooley@finnegan.com
`mingji.jin@finnegan.com
`
`
`FOR PATENT OWNER:
`
`Todd Landis
`John Wittenzellner
`WILLIAMS SIMONS & LANDIS PLLC
`tlandis@wsltrial.com
`johnw@wsltrial.com
`
`
`
`
`
`
`8
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