Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper No. 13
`Filed: June 3, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`IXI IP, LLC,
`Patent Owner.
`____________
`
`Case Nos.
`IPR2019-00124, IPR2019-00125,
`IPR2019-00139, IPR2019-00140,
`IPR2019-00141, IPR2019-00181.
`Patent 7,039,033 B2
`____________
`
`
`Before JANET A. GONGOLA, MICHAEL P. TIERNEY, and
`WILLIAM M. FINK, Vice Chief Administrative Patent Judges.
`
`TIERNEY, Vice Chief Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
`Paper No. 13
`Filed: June 3, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`IXI IP, LLC,
`Patent Owner.
`____________
`
`Case Nos.
`IPR2019-00124, IPR2019-00125,
`IPR2019-00139, IPR2019-00140,
`IPR2019-00141, IPR2019-00181.
`Patent 7,039,033 B2
`____________
`
`
`Before JANET A. GONGOLA, MICHAEL P. TIERNEY, and
`WILLIAM M. FINK, Vice Chief Administrative Patent Judges.
`
`TIERNEY, Vice Chief Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00124, IPR2019-00125,
`IPR2019-00139, IPR2019-00140,
`IPR2019-00141, IPR2019-00181
`Patent 7,039,033 B2
`
`I.
`
`Introduction
`
`
`
`On November 8, 2018, Apple Inc. (“Petitioner”) filed six petitions for
`
`inter partes review of U.S. Patent No. 7,039,033 (Ex. 1001, “the ’033
`
`patent”), issued on May 2, 2006. Paper 2, 67 (“Pet.”).1 Accompanying the
`
`petitions for each proceeding, Petitioner filed identical motions for joinder
`
`and/or consolidation under 35 U.S.C. § 315(c). Paper 3 (“Motion”).2
`
`Specifically, Petitioner seeks to join and/or consolidate the six inter partes
`
`reviews with previously filed IPR2015-01444. Motion 1.
`
`IXI IP, LLC (“Patent Owner”) opposes Petitioner’s request for joinder
`
`and/or consolidation and contends that Petitioner’s six petitions are time
`
`barred under 35 U.S.C. § 315(b). Paper 9 (“Opposition”). Patent Owner
`
`also filed a Preliminary Response (Paper 12, “Prel. Resp.”), repeating its
`
`contention that the six petitions are time barred under 35 U.S.C. § 315(b).
`
`Prel. Resp. 1, 7.
`
`We have reviewed the parties’ contentions and, for the reasons
`
`discussed in detail below, deny Petitioner’s request for joinder and/or
`
`consolidation and deny its six petitions for institution.
`
`
`
`II. Background
`
`
`
`On October 2, 2014, Patent Owner filed a patent infringement suit
`
`against Petitioner in district court, alleging infringement of the ’033 patent.
`
`
`1 Unless otherwise specified, all papers referred to herein are from IPR2019-
`00124.
`2 Upon Patent Owner’s request for an extension of the time to file an
`opposition to Petitioner’s motions for joinder, on December 7, 2018, we
`granted a two-month extension by email.
`
`
`
`2
`
`
`
`IPR2019-00124, IPR2019-00125,
`IPR2019-00139, IPR2019-00140,
`IPR2019-00141, IPR2019-00181
`Patent 7,039,033 B2
`
`
`On June 19, 2015, Petitioner, together with two Samsung entities,
`
`filed an IPR petition (IPR2015-01444) challenging every claim in the ’033
`
`patent asserted in the district court litigation. Id. at 45; Motion 2. The
`
`Board instituted review and ultimately issued a final written decision on
`
`December 21, 2016, holding every challenged claim unpatentable. Ex.
`
`1030. The Board’s decision was appealed and subsequently upheld by the
`
`Federal Circuit. IXI IP, LLC v. Samsung Elecs. Co., Ltd., 903 F.3d 1257
`
`(Fed. Cir. 2018). Thereafter, on January 16, 2019, the Board issued a trial
`
`certificate cancelling all claims challenged in the IPR, specifically, claims 1,
`
`4–7, 12, 14, 15, 22, 23, 25, 28, 34, 39, 40, 42, and 46. Ex. 2001.
`
`
`
`On March 24, 2017, while the previously filed IPR2015-01444 was on
`
`appeal, Patent Owner sought ex parte reexamination of the ’033 patent.
`
`Prosecution History of Reexamination Control No. 90013925, Ex. 1032, 3.
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`The Office granted the reexamination request on May 17, 2017. Id. at
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`180–197. A reexamination certificate issued on February 1, 2018,
`
`cancelling original claims 48–55, amending claim 56, and adding claims
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`57–124. Id. at 5–9.
`
`
`
`
`
`3
`
`
`
`IPR2019-00124, IPR2019-00125,
`IPR2019-00139, IPR2019-00140,
`IPR2019-00141, IPR2019-00181
`Patent 7,039,033 B2
`
`III. The Motion for Joinder and/or Consolidation is Denied
`
`Joinder to an already-instituted proceeding may be authorized when
`
`warranted, but the decision to grant joinder is discretionary. 35 U.S.C.
`
`§ 315(c). As provided for by the trial rules, any request for joinder must be
`
`filed as a motion under 37 C.F.R. § 42.22 no later than one month after the
`
`institution date of any inter partes review for which joinder is requested.
`
`See 37 C.F.R. § 42.122(b). Consolidation, like joinder, is discretionary and
`
`may occur “during the pendency of an inter partes review, if another
`
`proceeding or matter involving the patent is before the Office.” 35 U.S.C.
`
`§ 315(d). When exercising discretion, the Board is mindful that the trial
`
`regulations, including the rules for joinder, must be construed to secure the
`
`just, speedy, and inexpensive resolution of every proceeding. See 37 C.F.R.
`
`§ 42.1(b).
`
`As a moving party, Petitioner has the burden of proof in establishing
`
`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A
`
`motion for joinder should, among other things, set forth the reasons why
`
`joinder is appropriate. See, e.g., Kyocera Corp. v. Softview LLC, Case
`
`IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15); FAQ H5 on
`
`the Board’s website at https://go.usa.gov/xmwXS.
`
`Previously filed IPR2015-01444 was instituted on December 30,
`
`2015. Petitioner filed its six petitions on November 8, 2018—more than 34
`
`months after IPR2015-01444 was instituted. As such, Petitioner’s motion
`
`requesting joinder was filed several years after the one-month deadline set
`
`by rule for joinder and thus was untimely.
`
`
`
`4
`
`
`
`IPR2019-00124, IPR2019-00125,
`IPR2019-00139, IPR2019-00140,
`IPR2019-00141, IPR2019-00181
`Patent 7,039,033 B2
`
`
`We recognize that the ’033 patent reexamination certificate adding
`
`claims 57–124 was not issued until February 1, 2018. Assuming for the
`
`sake of argument that the rules provide for joinder within one month of the
`
`issuance of the reexamination certificate, which the rules do not expressly
`
`cover, Petitioner still was several months late in filing its request for joinder.
`
`Therefore, under either possible trigger date—institution of IPR2015-01444
`
`or issuance of the reexamination certificate—Petitioner’s motion for joinder
`
`is time barred under our rules.
`
`Notwithstanding the time bar, in previously filed IPR2015-01444, a
`
`trial certificate issued on January 16, 2019, cancelling all challenged claims
`
`in the ’033 patent. Ex. 2001. As such, that inter partes review is no longer
`
`pending before the Office. Accordingly, the previously filed IPR cannot
`
`serve as a base proceeding to which another proceeding may be joined or
`
`consolidated. In other words, there is nothing to join to and, therefore, for
`
`this additional and independent reason, the motion is denied.
`
`Based on the record presented, we determine that Petitioner has not
`
`met its burden to show that joinder and/or consolidation would be
`
`appropriate.
`
`
`
`IV. The Petitions are Time Barred and thus Denied
`
`
`
`Petitioner filed the six petitions on November 8, 2018, well more than
`
`a year after being served with a complaint alleging infringement of the ’033
`
`patent on October 2, 2014. An inter partes review may not be instituted if
`
`the petition requesting the proceeding was filed more than one year after the
`
`date on which the petitioner was served a complaint alleging infringement of
`
`
`
`5
`
`
`
`IPR2019-00124, IPR2019-00125,
`IPR2019-00139, IPR2019-00140,
`IPR2019-00141, IPR2019-00181
`Patent 7,039,033 B2
`
`the patent. 35 U.S.C. § 315(b). Accordingly, Petitioner’s six petitions are
`
`time barred under § 315(b).
`
`Petitioner contends, however, that the Board should treat Patent
`
`Owner’s ex parte reexamination certificate adding new claims as creating a
`
`new, materially different “patent.” Pet. 2. Thus, the one-year bar of §
`
`315(b) does not apply because the six petitions were filed a little more than
`
`nine months after the reexamination certificate was granted on February 1,
`
`2018. Id. Petitioner states that the Federal Circuit addressed this issue in
`
`Click-to-Call Technologies, LP v. Ignenio Inc.,3 and it provided a framework
`
`for the Board to decide on a case-by-case basis whether new reexamination
`
`claims should be considered part of the same “patent” as that term is used in
`
`the statute. Pet. 7–9.
`
`
`
`Patent Owner disagrees with Petitioner’s analysis of the time-bar issue
`
`and contends that the Federal Circuit’s decision in Click-to-Call rejects the
`
`very argument raised by Petitioner. Prel. Resp. 2. According to Patent
`
`Owner, Click-to-Call held that a reexamination certificate does not create a
`
`new “patent” or affect the § 315(b) time bar. Id. at 4.
`
`
`
`We agree with Patent Owner. The issue in Click-to-Call was whether
`
`the time bar of § 315(b) applied where a petitioner was served with a
`
`complaint of infringement more than one year before the petition for IPR but
`
`where the complaint had been voluntarily dismissed without prejudice.
`
`Click-to-Call, 899 F.3d at 1326–27. Click-to-Call held that the plain and
`
`unambiguous language of § 315(b) does not contain any exceptions for
`
`complaints subsequently dismissed. Id. at 1329–32. In reaching this
`
`3 899 F.3d 1321 (Fed. Cir. 2018) (en banc).
`6
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`
`
`IPR2019-00124, IPR2019-00125,
`IPR2019-00139, IPR2019-00140,
`IPR2019-00141, IPR2019-00181
`Patent 7,039,033 B2
`
`determination, the Federal Circuit analyzed the impact of a subsequent ex
`
`parte reexamination of the underlying patent. Id. at 1336–37. Specifically,
`
`the petitioners in Click-to-Call alleged that the claims of the underlying
`
`patent were materially changed during reexamination and that the
`
`reexamined patent “should be treated as a new patent for purposes of
`
`§ 315(b).” Id. at 1336. The Federal Circuit disagreed with the petitioners
`
`and held that reexamination does not result in the issuance of a new patent
`
`for purposes of § 315(b), regardless of claim scope. Id. Click-to-Call held
`
`that arguments to the contrary “are mistaken.” Id.
`
`Click-to-Call states that even if § 315(b) were ambiguous with respect
`
`to the term “the patent,” the argument that the time bar did not apply would
`
`not hold. Id. at 1337. Specifically, Click-to-Call cites to and relies upon
`
`Senju Pharmaceutical Co. v. Apotex Inc., 746 F.3d 1344, 1352 (Fed. Cir.
`
`2014), a case that focused on the question of whether a reexamined patent is
`
`a new patent for purposes of issue preclusion. The Senju decision concerned
`
`the applicability of claim preclusion to a second suit where the second suit
`
`involved reexamined claims issuing from the patent involved in a first suit.
`
`Id. at 1346. Senju, like Click-to-Call, confirmed that a reexamined patent is
`
`still the original patent. Specifically, the Federal Circuit explained that
`
`“[r]eexamination does not involve the filing of a new patent application nor
`
`the issuance of a new patent.” Senju, 746 F.3d at 1352.
`
`Accordingly, Patent Owner’s reexamined ’033 patent is the original
`
`patent for purposes of 35 U.S.C. § 315(b). Although we recognize this
`
`means the potential unavailability of inter partes review for reexamined
`
`claims, “Congress could have included in . . . [§] 315(b) language regarding
`
`
`
`7
`
`
`
`IPR2019-00124, IPR2019-00125,
`IPR2019-00139, IPR2019-00140,
`IPR2019-00141, IPR2019-00181
`Patent 7,039,033 B2
`
`the effect of reexamination on the deadline to file an IPR—it chose not to do
`
`so.” Click-to-Call, 899 F.3d at 1337. Accordingly, we cannot institute an
`
`inter partes review as Petitioner filed its six petitions more than one year
`
`after it was served a complaint alleging infringement of the patent.
`
`35 U.S.C. § 315(b). Petitioner’s six petitions therefore are denied.
`
`
`
`V. Order
`
`
`
`
`
`For the reasons given, it is:
`
`ORDERED that Petitioner’s six petitions are denied as to the
`
`challenged claims of the ’033 patent; and
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`FURTHER ORDERED that no inter partes reviews are instituted.
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`8
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`IPR2019-00124, IPR2019-00125,
`IPR2019-00139, IPR2019-00140,
`IPR2019-00141, IPR2019-00181
`Patent 7,039,033 B2
`
`PETITIONER:
`
`Walter Renner
`axf-ptab@fr.com
`
`Jeremy Monaldo
`jjm@fr.com
`
`
`
`PATENT OWNER:
`
`Kenneth Weatherwax
`weatherwax@lowensteinweatherwax.com
`
`Russell Slifer
`rdslifer@gmail.com
`
`Edward Hsieh
`hsieh@lowensteinweatherwax.com
`
`Parham Hendifar
`hendifar@lowensteinweatherwax.com
`
`Patrick Maloney
`maloney@lowensteinweatherwax.com
`
`Sangeeta Shah
`sshah@brookskushman.com
`
`David Bir
`dbir@brookskushman.com
`
`
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`9
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