Trials@uspto.gov
`571.272.7822
`
`
`
`
` Paper 11
`
`
` Filed: June 24, 2024
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`MULTIMEDIA TECHNOLOGIES PTE. LTD.,
`Patent Owner.
`____________
`
`IPR2024-00699
`Patent 10,419,805 B2
`____________
`
`
`
`
`
`
`Before ST. JOHN COURTENAY III, MICHAEL R. ZECHER, and
`SHARON FENICK, Administrative Patent Judges.
`
`COURTENAY, 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 11
`
`
` Filed: June 24, 2024
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`MULTIMEDIA TECHNOLOGIES PTE. LTD.,
`Patent Owner.
`____________
`
`IPR2024-00699
`Patent 10,419,805 B2
`____________
`
`
`
`
`
`
`Before ST. JOHN COURTENAY III, MICHAEL R. ZECHER, and
`SHARON FENICK, Administrative Patent Judges.
`
`COURTENAY, 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
`
`
`
`
`
`
`
`IPR2024-00699
`Patent 10,419,805 B2
`
`
`I. INTRODUCTION
`
`On March 14, 2024, Petitioner, VIZIO, Inc. (“VIZIO”), filed a
`Petition requesting an inter partes review (“IPR”) of claims 1–18 of U.S.
`Patent No. 10,419,805 B2 (Ex. 1001, “the ’805 patent”). Paper 3 (“Petition”
`or “Pet.”). VIZIO filed its Petition along with a Motion for Joinder
`requesting that we join VIZIO as a party with LG Electronics, Inc. v.
`Multimedia Technologies Pte. Ltd., IPR2024-00354 (“LG IPR”). Paper 2
`(“Mot. for Joinder”).
`On May 21, 2024, we entered a Decision on Institution in the LG IPR,
`in which we instituted an IPR as to claims 1–18 of the ’805 patent. See LG
`IPR, Paper 9 (“LG IPR Dec. on Inst.”). The Petition and supporting
`evidence filed in this proceeding are substantively identical to the petition
`and supporting evidence filed in the LG IPR. Compare LG IPR, Paper 1
`(“LG IPR Petition”), 1–101, and Exs. 1001–1018, with Pet. 1–100, and
`Exs. 1001–1018. Moreover, VIZIO represents that it is willing to limit the
`asserted grounds of unpatentability (“grounds”) to the same grounds asserted
`in the LG IPR. Mot. for Joinder 5–6. VIZIO also represents that, if it is
`allowed to join the LG IPR, it will assume an “understudy” role (i.e., a
`passive role) and will assume an active role only in the event that LG
`Electronics, Inc. and LG Electronics U.S.A., Inc. (collectively, “LG”), the
`petitioner in the LG IPR, ceases to participate in the LG IPR and the LG IPR
`terminates only with respect to LG.1 Mot. for Joinder 7–9.
`
`
`1 For example, in its understudy role, VIZIO may not file any paper or
`exhibit in the LG IPR separate and apart from LG, absent our express
`authorization.
`
`
`
`2
`
`
`
`IPR2024-00699
`Patent 10,419,805 B2
`
`
`In this proceeding, Patent Owner Multimedia Technologies Pte. Ltd.
`(“Multimedia”) did not file an opposition to VIZIO’s Motion for Joinder,
`nor did Multimedia elect to file a Preliminary Response. Ex. 3002.
`Under 35 U.S.C. § 314(a), an IPR may not be instituted unless the
`information presented in the Petition shows “there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” For the reasons we discuss below, we institute
`an IPR as to claims 1–18 of the ’805 patent, and we grant VIZIO’s Motion
`for Joinder.
`
`II. INSTITUTION OF IPR
`In the LG IPR, we instituted an IPR as to all claims 1–18 of the ’805
`patent based on all the asserted grounds set forth in the table below. LG IPR
`Dec. on Inst. 40–41.
`Challenged Claim(s)
`
`35 U.S.C. §
`
`Reference(s)/Basis
`Melnychenko,3 Chen4
`
`Melnychenko, Chen,
`Kim, 6 Lee-17
`
`1, 10, 17
`1–3, 6, 9–12, 5 16–18
`
`
`103(a)2
`
`103(a)
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103, effective on March 16, 2013.
`The ’805 patent claims the benefit of filing dates prior to the effective date
`of the applicable AIA amendments. See Ex. 1001, code (60, 63). Therefore,
`we refer to the pre-AIA version of 35 U.S.C. § 103.
`3 Melnychenko, US 2013/0263184 A1 (published Oct. 3, 2013).
`4 Chen, US 2007/0226268 A1 (published Sept. 27, 2007).
`5 Claim 9 is not listed in VIZIO’s chart on page 11 of the Petition but is
`included in its substantive analysis under the asserted obviousness ground
`based on Melnychenko, Chen, Kim, and Lee-1 on page 72 of the Petition.
`See Pet. 72–74.
`6 Kim, US 2012/0054794 A1 (published Mar. 1, 2012).
`7 Lee (Lee-1), US 9,008,190 B2 (issued Apr. 14, 2015).
`3
`
`
`
`
`
`IPR2024-00699
`Patent 10,419,805 B2
`
`
`Challenged Claim(s)
`
`4, 13
`
`5
`
`6–8, 14, 15
`
`35 U.S.C. §
`
`103(a)
`
`103(a)
`
`103(a)
`
`Reference(s)/Basis
`Melnychenko, Chen,
`Kim, Lee-1, Lee-28
`Melnychenko, Chen,
`Kim, Lee-1, Lee-2,
`Ferren 9
`Melnychenko, Chen,
`Kim, Lee-1, Choi10
`As we indicate previously, the Petition and supporting evidence filed
`in this proceeding are essentially the same as the LG IPR Petition and
`supporting evidence filed in the LG IPR, and VIZIO is willing to limit the
`asserted grounds in this proceeding to the same grounds asserted in the LG
`IPR. Mot. for Joinder 5–7.
`As we explain below, we grant VIZIO’s Motion for Joinder. Given
`that we are granting VIZIO’s Motion for Joinder, we determine that the
`information presented in the Petition establishes that there is a reasonable
`likelihood that VIZIO would prevail in challenging claims 1–18 of the ’805
`patent as unpatentable as obvious under § 103(a) for the same reasons
`already set forth in the Decision on Institution in the LG IPR. See LG IPR
`Dec. on Inst. Pursuant to § 314, we institute an IPR as to these claims of the
`’805 patent.
`
`
`III. GRANTING VIZIO’S MOTION FOR JOINDER
`Based on authority delegated to us by the Director, we have discretion
`to join a petitioner requesting an IPR as a party to another IPR, subject to
`
`
`8 Lee (Lee-2), US 9,398,339 B2 (issued July 19, 2016).
`9 Ferren, US 8,893,184 B2 (issued Nov. 18, 2014).
`10 Choi, US 2013/0057764 A1 (published Mar. 7, 2013).
`4
`
`
`
`
`
`IPR2024-00699
`Patent 10,419,805 B2
`
`certain exceptions not present here. 35 U.S.C. § 315(c). The regulatory
`provisions governing an IPR address the appropriate timeframe for filing a
`motion for joinder. Section 42.122(b) of Title 37 of the Code of Federal
`Regulations provides, in relevant part, “[a]ny 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.”
`
`The Petition in this proceeding was accorded a filing date of March
`14, 2024 (Paper 4 (“Notice of Filing Date Accorded to Petition and Time for
`Filing Patent Owner Preliminary Response), 1), and the Motion for Joinder
`was filed on the same day. As such, VIZIO’s Motion for Joinder was
`timely, because joinder was requested no later than one month after May 21,
`2024, the institution date of the LG IPR. See LG IPR Dec. on Inst.
`
`In its Motion for Joinder, VIZIO contends that joinder is appropriate
`because this proceeding and the LG IPR are substantively identical (i.e., they
`involve the same claims, the same patent, the same prior art references, the
`same expert declaration, and the same arguments and evidence). See Mot.
`for Joinder 4–6. Stated differently, VIZIO asserts that the Petition and
`supporting evidence filed in this proceeding do not raise any new substantive
`or procedural issues. See id. VIZIO further argues that, because it is willing
`to work with counsel for LG (i.e., as an understudy) to consolidate all filings
`and discovery, joinder will not impact the schedule of the LG IPR, thereby
`allowing us to complete a single consolidated proceeding in a timely
`manner. Id. at 7–9. VIZIO also argues that, if it is joined as a party with the
`LG IPR, Multimedia will not suffer any prejudice because granting joinder
`under these circumstances will not add new issues for consideration by or
`costs to Multimedia above and beyond those already presented in the LG
`
`
`
`5
`
`
`
`IPR2024-00699
`Patent 10,419,805 B2
`
`IPR, nor will granting joinder affect the issues, briefing, or discovery in the
`LG IPR, as they will remain the same. Id. at 9–10.
`Given that Multimedia did not oppose VIZIO’s Motion for Joinder
`(Ex. 3002), and VIZIO agrees to consolidate all filings and discovery with
`LG (Mot. for Joinder 6–7), VIZIO has demonstrated that joinder will not
`unduly complicate or delay the LG IPR. See 37 C.F.R. § 42.1(b) (providing
`for “the just, speedy, and inexpensive resolution of every proceeding”
`(emphases added)). We, therefore, grant VIZIO’s Motion for Joinder and, as
`a result, join VIZIO as a party with the LG IPR.
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a) and 37 C.F.R. § 42.4,
`an IPR is instituted as to claims 1–18 of the ’805 patent;
`FURTHER ORDERED that VIZIO’s Motion for Joinder is granted,
`and VIZIO is joined as a party with IPR2024-00354;
`FURTHER ORDERED that the grounds on which an IPR was
`instituted in IPR2024-00354 remain unchanged, and no other grounds are
`instituted in the joined proceedings;
`FURTHER ORDERED that IPR2024-00699 is instituted, joined with
`IPR2024-00354, and all further filings in these joined proceedings shall be
`made in IPR2024-00354;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2024-00354 (Paper 10) shall govern the schedule of these joined
`proceedings;
`FURTHER ORDERED that VIZIO’s participation in the briefing,
`depositions, and oral argument of these joined proceedings shall be subject
`
`
`
`6
`
`
`
`IPR2024-00699
`Patent 10,419,805 B2
`
`to LG’s acquiescence to VIZIO’s participation and, absent our express
`authorization, VIZIO shall not file papers or exhibits separate and apart from
`LG;
`
`FURTHER ORDERED that the roles of LG and Multimedia in these
`joined proceedings remain unchanged;
`FURTHER ORDERED that the case caption in IPR2024-00354 shall
`be changed to reflect that VIZIO has been joined as a party in accordance
`with the attached example; and
`FURTHER ORDERED that a copy of this Decision be entered into
`the file of IPR2024-00354.
`
`
`
`7
`
`
`
`IPR2024-00699
`Patent 10,419,805 B2
`
`For PETITIONER:
`
`Steven W. Hartsell
`Rex Hwang
`Sarah E. Spires
`SKIERMONT DERBY LLP
`shartsell@skiermontderby.com
`rhwang@skiermontderby.com
`sspires@skiermontderby.com
`
`
`For PATENT OWNER:
`
`James T. Carmichael
`Stephen McBride
`Minghui Yuang
`CARMICHAEL IP, PLLC
`jim@carmichaelip.com
`stevemcbride@carmichaelip.com
`mitch@carmichaelip.com
`
`Ryan J. Singer
`SCHULTE ROTH & ZABELL LLP
`ryan.singer@srz.com
`
`
`
`
`
`
`8
`
`
`
`Paper No.
`Filed:
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC., and
`VIZIO, INC.
`Petitioners,
`
`v.
`
`MULTIMEDIA TECHNOLOGIES PTE. LTD.,
`Patent Owner.
`____________
`
`IPR2024-00354111
`Patent 10,419,805 B2
`____________
`
`
`Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`111 VIZIO, Inc. filed a petition in IPR2024-00699 and was joined as
`petitioner in this proceeding.
`
`
`
`
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