Paper No. __
`Filed: July 26, 2023
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`LG ELECTRONICS INC.,
`Petitioner,
`v.
`JAWBONE INNOVATIONS, LLC,
`Patent Owner.
`
`
`
`
`
`IPR2023-01248
`U.S. Patent No. 8,467,543
`
`
`
`
`
`MOTION FOR JOINDER TO AND CONSOLIDATION WITH
`RELATED INTER PARTES REVIEW IPR2023-00275
`PURSUANT TO 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`Filed: July 26, 2023
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`LG ELECTRONICS INC.,
`Petitioner,
`v.
`JAWBONE INNOVATIONS, LLC,
`Patent Owner.
`
`
`
`
`
`IPR2023-01248
`U.S. Patent No. 8,467,543
`
`
`
`
`
`MOTION FOR JOINDER TO AND CONSOLIDATION WITH
`RELATED INTER PARTES REVIEW IPR2023-00275
`PURSUANT TO 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`LG Electronics’ Motion for Joinder with
`Case IPR2023-00275
`
`Table of Contents
`INTRODUCTION ........................................................................................... 1
`
`STATEMENT OF FACTS .............................................................................. 2
`
`I.
`
`II.
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 2
`
`A.
`
`B.
`
`C.
`
`Legal Standard ....................................................................................... 2
`
`Petitioner’s Motion for Joinder Is Timely. ............................................ 3
`
`The Board Should Permit Joinder ......................................................... 3
`
`1.
`
`2.
`
`3.
`
`Joinder Is Appropriate for Several Reasons. .............................. 4
`
`Petitioner Proposes No New Grounds of Unpatentability. ......... 5
`
`Joinder Will Not Unduly Burden or Negatively Impact the
`
`Amazon IPR Trial Schedule. ...................................................... 5
`
`4.
`
`How Briefing and Discovery May Be Simplified ...................... 6
`
`D. General Plastic Is Inapplicable ............................................................. 8
`
`IV. CONCLUSION .............................................................................................. 11
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`
`
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`
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`-i-
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`
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`LG Electronics’ Motion for Joinder with
`Case IPR2023-00275
`
`I.
`
`INTRODUCTION
`LG Electronics Inc. (“Petitioner”) respectfully submits this Motion for
`
`Joinder, together with a Petition for Inter Partes Review (“IPR”) of U.S. Patent No.
`
`8,467,543 (“the ’543 Patent”) filed contemporaneously herewith. Pursuant to 35
`
`U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioner requests institution of this IPR,
`
`and joinder and consolidation with IPR2023-00275 (“the Amazon IPR”). That IPR
`
`challenges the same claims and was instituted on July 10, 2023.
`
`Joinder here would be consistent with the overarching policy of securing “the
`
`just, speedy, and inexpensive resolution” of every IPR proceeding. 37 C.F.R.
`
`§ 42.1(b). Petitioners’ Petition and the Amazon Petition are substantively
`
`identical— they contain the same grounds, based on the same prior art combinations
`
`against the same claims. Thus, joinder would neither unduly complicate the Amazon
`
`IPR nor delay its schedule.
`
`To streamline discovery and briefing, Petitioner agrees to take an “under-
`
`study” role, actively participating substantively in the Amazon IPR only if Amazon
`
`terminates its involvement after joinder. (If Amazon were to terminate its
`
`involvement prior to this motion being granted, then Petitioner would withdraw this
`
`motion so that Petitioner’s timely-filed Petition could be considered on its merits.)
`
`Because
`
`joinder would promote
`
`judicial efficiency
`
`in determining
`
`patentability without prejudicing Patent Owner, the Board should grant this motion.
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`-1-
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`
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`LG Electronics’ Motion for Joinder with
`Case IPR2023-00275
`
`II.
`
`STATEMENT OF FACTS
`Patent Owner filed suit against Samsung on May 27, 2021, asserting seven
`
`patents. (Case No. 2:21-cv-00186, E.D. Tex.) Patent Owner filed suits against Apple
`
`and Google on September 23, 2021, and has asserted nine patents against each of
`
`them, including the seven patents also asserted against Samsung. (Case Nos. 6:21-
`
`cv-00985, E.D. Tex., and 6:21-cv-00984, W.D. Tex.) Patent Owner filed suit against
`
`Amazon on Nov. 29, 2021, and has asserted the same nine patents. (Case No.
`
`2:21-cv-00435, E.D. Tex., transferred to Case No. 5:22-cv-06727, N.D. Cal.) Patent
`
`Owner filed suit against Petitioner on February 28, 2023, asserting eight of the nine
`
`patents it previously asserted against Apple, Google, and Amazon. Also on February
`
`28, 2023, Patent Owner filed suit against Sony, HTC, OPPO, Panasonic, ZTE Corp.,
`
`and Meta. Apple, Google, and Amazon have filed IPR Petitions against each of the
`
`patents asserted against them.
`
`For some of the patents asserted against it, including the ’543 Patent,
`
`Petitioner is filing substantively identical petitions to those previously filed and is
`
`seeking joinder.
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`A. Legal Standard
`The Board has the authority to join Petitioner as a party to the Amazon IPR.
`
`35 U.S.C. § 315(c); see also 35 U.S.C. § 315(d) (Board also has the authority to
`
`-2-
`
`
`
`LG Electronics’ Motion for Joinder with
`Case IPR2023-00275
`
`consolidate proceedings). Whether a request for joinder should be granted is
`
`discretionary. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4
`
`(P.T.A.B., April 24, 2013).
`
`B.
`Petitioner’s Motion for Joinder Is Timely
`A petitioner may request joinder “no later than one month after the institution
`
`date” of the original IPR. 37 C.F.R. § 42.122(b). This is the “only timing requirement
`
`for a motion for joinder.” Central Security Group — Nationwide, Inc. v. Ubiquitous
`
`Connectivity, LP, IPR2019-01609, Paper 11, at 8-9 (P.T.A.B. Feb. 26, 2020).
`
`This motion for joinder is timely. Amazon’s Petition was filed November 28,
`
`2022, and IPR was instituted on July 10, 2023. Thus, Petitioner is filing its motion
`
`for joinder within the time limit enumerated in 37 C.F.R. § 42.122(b).
`
`C. The Board Should Permit Joinder
`In deciding whether to exercise its discretion and permit joinder, the Board
`
`considers: (1) why joinder is appropriate; (2) whether the new petition presents any
`
`new grounds of unpatentability; (3) any impact joinder would have on the trial
`
`schedule for the existing review; and (4) how briefing and discovery may be
`
`simplified. Kyocera Corp., IPR 2013-00004, Paper 15 at 4 (April 24, 2013). Here,
`
`each of the four factors weighs in favor of joinder.
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`-3-
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`
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`LG Electronics’ Motion for Joinder with
`Case IPR2023-00275
`
`1.
`Joinder Is Appropriate for Several Reasons.
`Joinder is appropriate here because the concurrently filed Petition involves the
`
`same patent, challenges the same claims, relies on the same substantive exhibits, and
`
`is based on the same grounds and combinations of prior art submitted in the Amazon
`
`IPR. The concurrently filed Petition is substantively identical to the Amazon
`
`Petition, containing only minor differences relating to (a) the procedural formalities
`
`of having a different Petitioner file the Petition, and (b) changes to arguments
`
`regarding discretionary denial under § 314(a) that result from a different co-pending
`
`litigation. There are no changes to the facts, citations, evidence, or arguments
`
`presented in the grounds for unpatentability set forth in the Amazon Petition.
`
`Because the proceedings are substantively identical, good cause exists for joining
`
`Petitioner as a party to the Amazon IPR and consolidating the proceedings, so that
`
`the Board can efficiently resolve identical challenges in a single proceeding.
`
`Central Security Group, IPR2019-01609, Paper 11 at 8; ZyXEL Commc’ns Corp. v.
`
`UNM Rainforest Innovations, IPR2021-00739, Paper 17 at 20 (P.T.A.B. Oct. 1,
`
`2021).
`
`This efficiency gain extends to the litigation. In the Petition, Petitioner
`
`stipulates that, if Petitioner’s Petition is instituted, then Petitioner will not pursue the
`
`grounds identified in its Petition in the district court. Thus, joinder will ensure that
`
`-4-
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`
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`LG Electronics’ Motion for Joinder with
`Case IPR2023-00275
`
`the grounds presented in the Amazon IPR are not inefficiently and unnecessarily
`
`adjudicated in another forum (e.g., the district court litigation involving Petitioner).
`
`Because joinder will increase efficiency and reduce duplicative proceedings
`
`involving the same patentability challenges, this factor favors joinder.
`
`2.
`Petitioner Proposes No New Grounds of Unpatentability.
`The concurrently filed Petition presents the same grounds of unpatentability
`
`as the Amazon Petition and challenges the same claims. Therefore, Petitioners do
`
`not propose any new grounds of unpatentability and this factor also favors joinder.
`
`3.
`
`Joinder Will Not Unduly Burden the Amazon IPR Trial
`Schedule.
`Because Petitioner’s Petition is substantively identical to the Amazon
`
`Petition—presenting the same grounds and challenging the same claims using the
`
`same evidence—there are no new issues for Patent Owner to address. Further,
`
`joinder with the Amazon IPR will not unduly burden the schedule in that proceeding.
`
`Petitioner is aware that Amazon and Patent Owner may be preparing to move to
`
`terminate the Amazon IPR. However, Sony has already filed its own joinder, Sony
`
`Electronics Inc. v. Jawbone Innovations, LLC, IPR2023-01222, Paper 1 (P.T.A.B.
`
`July 20, 2023). Furthermore, the Board is expressly delegated the authority to adjust
`
`the one-year deadline for reaching FWD “in the case of joinder,” meaning that this
`
`situation was explicitly within the congressional intent in establishing IPRs. 35
`
`-5-
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`
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`LG Electronics’ Motion for Joinder with
`Case IPR2023-00275
`
`U.S.C.§ 316(a)(11), 37 C.F.R. § 42.100(c). Thus, this factor also favors joinder.
`
`Sony Corp. v. Memory Integrity, LLC, IPR2015-01353 Paper 11 at 6 (granting
`
`motion where joinder does “not necessitate any additional briefing or discovery from
`
`Patent Owner beyond that already required [by the original IPR]”).
`
`4. How Briefing and Discovery May Be Simplified.
`The concurrently filed Petition and the Amazon Petition present substantively
`
`identical grounds of unpatentability, including the same combinations of art against
`
`the same claims. Additionally, if this motion for joinder is granted, Petitioners agree
`
`to take an “understudy” role, adhering to the following restrictions, as described by
`
`the Board:
`
`“(a) all filings by [Petitioner] in the joined proceeding be consolidated
`
`with [Amazon’s], unless a filing solely concerns issues that do not
`
`involve [Amazon]; (b) [Petitioner] shall not be permitted to raise any
`
`new grounds not already instituted by the Board in the [Amazon IPR],
`
`or introduce any argument or discovery not already introduced by
`
`[Amazon]; (c) [Petitioner] shall be bound by any agreement between
`
`[Patent Owner] and
`
`[Amazon] concerning discovery and/or
`
`depositions; and (d) [Petitioner] at deposition shall not receive any
`
`direct, cross-examination or redirect time beyond that permitted for
`
`-6-
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`
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`LG Electronics’ Motion for Joinder with
`Case IPR2023-00275
`
`[Amazon] alone under either 37 C.F.R. § 42.53 or any agreement
`
`between [Patent Owner] and [Amazon].”
`
`Mylan Pharms. Inc. v. Novartis AG, IPR2015-00268, Paper 17 at 5 (P.T.A.B. April
`
`10, 2015) (emphasis in original); see also Sony, IPR2015-01353, Paper 11 at 6
`
`(granting joinder where petitioners requested an “understudy” role). Petitioner will
`
`assume the primary role only if Amazon ceases to participate in the Amazon IPR.
`
`By joining Petitioner in the Amazon IPR and allowing Petitioner to take on
`
`an understudy role, both briefing and discovery will be simplified because Patent
`
`Owner can maintain its current trial schedule and avoid duplicative efforts. The
`
`understudy role will minimize any potential complications or delay that potentially
`
`could result by joinder, including duplicative discovery and filings. Sony, IPR2015-
`
`01353, Paper 11 at 6-7 (“[J]oinder would increase efficiency by eliminating
`
`duplicative filings and discovery, and would reduce costs and burdens on the parties
`
`as well as the board” where petitioners sought an “understudy” role). Furthermore,
`
`if joinder is denied, because the joinder decision will likely come before the 1-year
`
`time bar date for filing IPR, the result will merely be that Petitioner (and likely Sony)
`
`will refile identical petitions, thus increasing the burden on the parties and the Board.
`
`Thus, this factor also favors joinder.
`
`For these foregoing reasons, each of the factors that the Board considers in
`
`evaluating potential joinder weighs in favor of granting this motion.
`
`-7-
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`
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`LG Electronics’ Motion for Joinder with
`Case IPR2023-00275
`
`D. General Plastic Is Inapplicable
`The General Plastic analysis is inapplicable to this joinder motion
`
`concurrently filed Petition. In General Plastic, the Board set forth factors for
`
`analyzing follow-on petitions. Generally, these factors are intended to help conserve
`
`the Board’s resources and to prevent a subsequent petitioner from gaining a strategic
`
`advantage from filing a later petition. General Plastic Indus. Co. v. Canon Kabushiki
`
`Kaisha, IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017).
`
`Here, Petitioner is not filing a follow-on petition. Rather, Petitioner seeks to
`
`join the Amazon IPR as an understudy and does not present any new grounds. This
`
`is not the type of serial petition necessitating a General Plastic analysis. Indeed, the
`
`Board has found that the General Plastic factors are “not particularly relevant” in
`
`this situation, i.e., where a different petitioner files a “me-too” or “copycat” petition
`
`with a timely motion for joinder. Central Security Group, IPR2019-01609, Paper 11
`
`at 8; Celltrion, Inc. v. Genentech, Inc., IPR2018-01019, Paper 11 at 9-11 (P.T.A.B.
`
`Oct. 30, 2018).
`
`Even if the Board were to consider the General Plastic factors, they would
`
`weigh in favor of institution. Petitioner has not previously filed a petition against the
`
`’543 Patent. Petitioner and the prior petitioners are not the same party and have no
`
`significant relationship. They are not co-defendants. They are competitors accused
`
`of infringement—in different actions pending in different courts—based on sales of
`
`-8-
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`
`
`LG Electronics’ Motion for Joinder with
`Case IPR2023-00275
`
`different products. This weighs against denial. NetNut Ltd. v. Bright Data Ltd.,
`
`IPR2021-00465, Paper 11, at 9 (P.T.A.B. Aug. 12, 2021) (declining to extend
`
`General Plastic to different petitioner with no relationship to previous petitioners);
`
`Mercedes-Benz USA, LLC v. Carucel Invs. L.P., IPR2019-01404, Paper 12, at 11-12
`
`(P.T.A.B. Jan. 22, 2020); Toshiba Am. Info. Sys., Inc. v. Walletex Microelecs. Ltd.,
`
`IPR2018-01538, Paper 11, at 20 (P.T.A.B. Mar. 5, 2019).
`
`The second through fifth factors relate to timing issues that are largely
`
`irrelevant on the facts presented here. When Petitioner learned of the prior art,
`
`whether Petitioner received Patent Owner’s preliminary response or an institution
`
`decision, and the length of time between the filing of the petitions, are all irrelevant.
`
`Petitioner did not previously file any IPR petition, so there is no “prior petition” to
`
`explain the timing of, has substantively duplicated the Amazon Petition, alleging the
`
`same facts, grounds, and prior art, and has agreed to take an understudy role.
`
`Petitioner has not altered any of the grounds, arguments, or evidence in the Amazon
`
`petition, and had no reason to be aware of the asserted prior art prior to being sued
`
`by Patent Owner on February 28, 2023. It is similarly irrelevant whether Petitioner
`
`received Patent Owner’s preliminary response or an institution decision, because,
`
`once again, Petitioner has merely duplicated the arguments and evidence in the
`
`Amazon Petition, which were necessarily drafted without the advantage of
`
`referencing either document, and is seeking to take an understudy role in which
`
`-9-
`
`
`
`LG Electronics’ Motion for Joinder with
`Case IPR2023-00275
`
`Petitioner will not control any strategic decisions—there is therefore no tactical
`
`advantage to be had in having access to either the preliminary response or the
`
`institution decision. As a result, this Petition cannot be considered an attempt to
`
`harass Patent Owner or otherwise engage in serial, tactical filings. Indeed, the exact
`
`opposite is true. Petitioner seeks to simplify and minimize the number of distinct
`
`proceedings by joining the Amazon IPR rather than pursuing a separate IPR based
`
`on different grounds. Furthermore, to the extent there is a gap between the filing of
`
`the Amazon petition and Petitioner’s (and Sony’s) petitions, it is because of Patent
`
`Owner’s own delay of over a year between filing suit against Amazon and against
`
`Petitioner and Sony.
`
`The sixth factor considers the Board’s resources and the seventh factor relates
`
`to the Board’s ability to meet the one-year statutory deadline. Allowing joinder here
`
`would not impact the Board’s resources (beyond those dedicated to deciding this
`
`motion), and, although granting this motion may push the Final Written Decision
`
`past the one-year statutory deadline in the event that Amazon seeks to terminate this
`
`IPR prior to a decision on this motion, as stated earlier, Congress expressly delegated
`
`to the Board the authority to “adjust[]” the one-year statutory deadline “in the case
`
`of joinder.” 35 U.S.C.§ 316(a)(11), 37 C.F.R. § 42.100(c). This factor is also
`
`therefore favors joinder, or is, at worst, neutral.
`
`-10-
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`
`
`LG Electronics’ Motion for Joinder with
`Case IPR2023-00275
`
`For the foregoing reasons, the General Plastic factors do not weigh against
`
`institution and joinder of Petitioner to Amazon’s IPR.
`
`IV. CONCLUSION
`Petitioner respectfully requests
`
`that
`
`the Board
`
`institute Petitioner’s
`
`concurrently filed IPR Petition, and then join Petitioner as a party to the Amazon
`
`IPR.
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`WILLKIE FARR & GALLAGHER LLP
`
`Dated: July 26, 2023
`
` /Indranil Mukerji/
`Indranil Mukerji (Reg. No. 46,944)
`John C. Moulder (Reg. No. 70,490)
`
`
`
`Attorneys for Petitioner
`LG ELECTRONICS INC.
`
`
`
`
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`-11-
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`
`
`LG Electronics’ Motion for Joinder with
`Case IPR2023-00275
`
`CERTIFICATE OF SERVICE
`I hereby certify that true and correct copies of the foregoing MOTION FOR
`
`JOINDER TO AND CONSOLIDATION WITH RELATED INTER PARTES
`
`REVIEW IPR2023-00275 PURSUANT TO 35 U.S.C. § 315(c) AND 37 C.F.R.
`
`§ 42.122(b) is being served on July 26, 2023, via FedEx Priority Overnight on
`
`counsel of record for U.S. Pat. 8,467,543 patent owner Jawbone Innovations, LLC
`
`at the address below:
`
`Mark Leonardo
`Nutter McClennen & Fish LLP
`Seaport West
`155 Seaport Blvd.
`Boston, MA 02210-2604
`A courtesy copy is also being served on counsel for the patent holder in the pending
`
`litigation Jawbone Innovations, LLC v. LG Electronics Inc., 2:23-cv-00078-JRG-
`
`RSP (E.D. Tex. filed February 28, 2023):
`
`
`Alfred R. Fabricant
`Peter Lambrianakos
`Vincent J. Rubino, III
`Richard M. Cowell
`Jacob D. Ostling
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`Email: ffabricant@fabricantllp.com
`Email: plambrianakos@fabricantllp.com
`
`-12-
`
`
`
`LG Electronics’ Motion for Joinder with
`Case IPR2023-00275
`
`Email: vrubino@fabricantllp.com
`Email: jostling@fabricantllp.com
`Email: rcowell@fabricantllp.com
`Email: jawbone@fabricantllp.com
`WILLKIE FARR & GALLAGHER LLP
`
`Dated: July 26, 2023
`
` /Indranil Mukerji/
`Counsel for Petitioner,
`LG ELECTRONICS INC.
`
`
`
`
`
`-13-
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`
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