IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Haller, et al.
`In re Patent of:
`7,039,033 Attorney Docket No.: 39521-0020IP3
`U.S. Patent No.:
`May 2, 2006
`
`Issue Date:
`Appl. Serial No.: 09/850,399
`
`Filing Date:
`May 7, 2001
`
`Title:
`System, device and computer readable medium for providing
`a managed wireless network using short-range radio signals
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`PETITIONER’S MOTION FOR JOINDER AND/OR CONSOLIDATION
`
`
`
`
`
`
`
`1
`
`
`
`
`Haller, et al.
`In re Patent of:
`7,039,033 Attorney Docket No.: 39521-0020IP3
`U.S. Patent No.:
`May 2, 2006
`
`Issue Date:
`Appl. Serial No.: 09/850,399
`
`Filing Date:
`May 7, 2001
`
`Title:
`System, device and computer readable medium for providing
`a managed wireless network using short-range radio signals
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`PETITIONER’S MOTION FOR JOINDER AND/OR CONSOLIDATION
`
`
`
`
`
`
`
`1
`
`
`
`
`
`Attorney Docket No. 39521-0020IP3
`Proceeding No. IPR2019-00139
`
`STATEMENT OF RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 315(d) and 37 C.F.R. §§ 41.122(a), Petitioner Apple
`
`Inc. (“Apple”) files this motion asking the Board to consolidate the present IPR with
`
`Case No. IPR2015-01444, which addresses the patentability of claims of U.S. Patent
`
`7,039,033 (“the ’033 patent”) over prior art references also relied on in this petition.
`
`INTRODUCTION
`
`Apple originally filed a petition seeking inter partes review of claims 1, 4-7,
`
`12, 14, 15, 22, 23, 25, 28, 34, 39, 40, 42, and 46 of the ’033 patent on June 19, 2015.
`
`Apple’s first petition was filed well before the statutory bar deadline: IXI initiated
`
`suit against Apple in October of 2014, and Apple’s petition was filed eight months
`
`later. See id. at 3; see also IXI Mobile (R&D) and IXI IP, LLC v. Apple Inc., Case
`
`4:15-cv-03755, D.I. 1 (N.D. Cal. October 2, 2014). Notably, Apple’s petition sought
`
`review of every claim that IXI had asserted against it in litigation. The Board
`
`instituted as to every claim challenged (IPR2015-01444, Paper 8), and after briefing
`
`and a hearing, cancelled every challenged claim as being unpatentable over PCT
`
`Publication No. WO 01/76154 A2 to Marchand (“Marchand”) in combination with
`
`various other references (id., Paper 27). IXI appealed the Board’s decision,
`
`contending it was not supported by substantial evidence. See IXI IP, LLC v. Samsung
`
`Elecs. Co. et al., Case No. 17-1665, D.I. 16 (Fed. Cir. June 2, 2017). The Federal
`
`2
`
`
`
`
`Circuit affirmed on September 10, 2018, and issued its mandate giving jurisdiction
`
`Attorney Docket No. 39521-0020IP3
`Proceeding No. IPR2019-00139
`
`back to the Board on October 17, 2018.
`
`On March 24, 2017—after the § 315(b) bar date and after this Board found all
`
`challenged claims unpatentable in the previous IPR—Patent Owner IXI IP, LLC
`
`(“IXI”) requested reexamination of the ’033 patent to amend the claims in light of
`
`substantial new questions of patentability raised by the prior art cited by Apple in
`
`the IPR. A reexamination certificate issued on February 1, 2018, which cancelled a
`
`number of claims not asserted in the litigation or challenged in the prior IPR, but
`
`amended independent claim 56 and added claims 57–124. As explained in Apple’s
`
`petition, these amendments simply took subject matter already found to be
`
`unpatentable in the IPR proceeding and added well-known functionality of mobile
`
`devices.
`
`Thus, Apple filed the instant petition to challenge the patentability of the new
`
`claims added during IXI’s reexamination. Apple respectfully requests joinder of this
`
`IPR with its previously-filed IPR (Case No. IPR2015-01444). As will be explained
`
`below, joinder is appropriate to secure a just, speedy, and inexpensive resolution of
`
`the dispute as to the patentability of the new claims, and is warranted because of the
`
`substantial overlap in the issues and art involved in both proceedings. See Gea
`
`Process Engr., Inc. Petr., IPR2014-00051, 2014 WL 1253170, at *6 (Patent Tr. &
`
`App. Bd. Mar. 10, 2014) (allowing consideration of claims amended in ex parte
`
`3
`
`
`
`
`reexamination because “our consideration of the amended claims in the
`
`Attorney Docket No. 39521-0020IP3
`Proceeding No. IPR2019-00139
`
`reexamination certificate at this time advances our obligation to secure the ‘just,
`
`speedy, and inexpensive resolution’ of every proceeding”); Microsoft Corp. v.
`
`Proxyconn, Inc., IPR2013-00109, Paper 15 (PTAB Feb. 25, 2013) (allowing joinder
`
`because of commonality of issues between two IPRs). Moreover, the minimal
`
`amount of work required on the part of the Patent Owner to address the new claims
`
`(work which, for the most part, should have already been done during the
`
`reexamination and prior IPR) is far outweighed by the public interest in having
`
`consistency of outcome concerning similar sets of claimed subject matter and prior
`
`art. See Amneal Pharm. LLC. v. Endo Pharm. Inc., IPR2014-01365, Paper 13
`
`(PTAB Feb. 4, 2015); Samsung Elecs. Co., Ltd. v. Virginia Innovation Scis., Inc.,
`
`IPR2014-00557, Paper 10 at 18 (PTAB June 13, 2014).
`
`LEGAL PRINCIPLES
`
`
`
`Section 315(d) of the Patent Act gives the PTO broad discretion to organize
`
`proceedings before it in any manner it sees fit. Specifically, where there are multiple
`
`proceedings involving the same patent before the Office, this section allows the
`
`director (or his assigns, such as the Board) to determine “the manner in which the
`
`inter partes review or other proceeding or matter may proceed, including providing
`
`for stay, transfer, consolidation, or termination of any such matter or proceeding.”
`
`35 U.S.C. § 315(d); see also 157 Cong. Rec. S 9988 (daily ed. Sept. 27, 2008)
`
`4
`
`
`
`
`(statement of Sen. Kyl) (explaining that the analogous “Section 325(c) gives the PTO
`
`Attorney Docket No. 39521-0020IP3
`Proceeding No. IPR2019-00139
`
`broad discretion to consolidate, stay, or terminate any PTO proceeding involving a
`
`patent if that patent is the subject of a postgrant review proceeding.”). Notably,
`
`unlike the provision governing joinder of parties (§ 315(c)), this section does not
`
`provide for any time limit on when a party may request consolidation or for when
`
`the Board may consolidate proceedings.
`
`
`
`The PTO has recognized this broad authority in its regulations. In
`
`implementing § 315(d), the Board promulgated a regulation providing that “the
`
`Board may during the pendency of the inter partes review enter any appropriate order
`
`regarding the additional matter including providing for the stay, transfer,
`
`consolidation, or termination of any such matter.” 37 C.F.R. § 42.122(a). Notably,
`
`although the Board has set forth specific time periods for joinder of parties, again no
`
`time limit is set for a consolidation of different proceedings. In addition, the PTO
`
`has given the Board broad authority to “determine a proper course of conduct in a
`
`proceeding for any situation not specifically covered by this part and may enter non-
`
`final orders to administer the proceeding.” 37 C.F.R. § 42.5.
`
`
`
`Although this request is made specifically pursuant to section 315(d) of the
`
`Patent Act and not section 315(c), the Board has made clear that the principles
`
`discussed in relation to section 315(c) are applicable to both requests for joinder of
`
`parties and joinder of issues. See Medtronic, IPR2014-00823, 2014 WL 6985725,
`
`5
`
`
`
`
`at *5 (“we conclude that § 315(c) encompasses both party joinder and issue joinder,
`
`Attorney Docket No. 39521-0020IP3
`Proceeding No. IPR2019-00139
`
`and as such, permits the joinder of any person who properly files a petition under §
`
`311, including a petitioner who is already a party to the existing inter partes
`
`review.”). Thus, as laid out in section 315(c), and as recognized by the Board, a
`
`petition will not be barred by § 315(b) if it is joined to a proceeding resulting from a
`
`timely-filed petition. See 37 C.F.R. § 42.122 (“The time period set forth in §
`
`42.101(b) shall not apply when the petition is accompanied by a request for
`
`joinder.”). Moreover, as laid out by the Board in Kyocera Corp. v. Softview, LLC,
`
`IPR2013-00004, Paper 15 at 4 (PTAB April 24, 2013), motions seeking
`
`consolidation or joinder should (1) provide the reasons why joinder is appropriate;
`
`(2) identify any new grounds of unpatentability being raised in the subsequent
`
`petition; (3) explain what impact (if any) there will be on the trial schedule for the
`
`existing review; and (4) address how briefing and/or discovery may be simplified to
`
`minimize schedule impact. Id.; see also Samsung Elecs. Co. Ltd. v. Unifi Sci.
`
`Batteries, LLC, IPR2013-00236, Paper 22 at 3 (PTAB Oct. 17, 2013).
`
`Lastly, in considering whether to join or consolidate proceedings, the Board
`
`must provide for a course which will “help ‘secure the just, speedy, and inexpensive
`
`resolution’ of these proceedings.” See 37 C.F.R. § 42.1(b); see also Amneal Pharm.
`
`LLC. v. Endo Pharm. Inc., IPR2014-01365, Paper 13 at 3 (PTAB Feb. 4, 2015);
`
`LaRose Indus., LLC v. Capriola Corp., IPR2013-00121, Paper 11 (June 28, 2013);
`
`6
`
`
`
`
`ABB, Inc. v. ROY-G-BIV Corp., IPR2013-00282, Paper 15 (Aug. 9, 2013) and
`
`Attorney Docket No. 39521-0020IP3
`Proceeding No. IPR2019-00139
`
`IPR2013-00286, Paper 14 (PTAB Aug. 9, 2013); Ariosa Diagnostics v. Isis
`
`Innovation, Ltd., IPR2013-00250, Paper 24 (PTAB Sept. 3, 2013); Cardiocom, LLC
`
`v. Robert Bosch Healthcare Sys., Inc., IPR2013-00469, Paper 21 (PTAB Jan. 28,
`
`2014).
`
`ARGUMENT
`
`A.
`
`Joinder Is Justified To Avoid Prejudice To Apple
`As discussed in the Petition at pages 6-24, Apple availed itself of IPR to gain
`
`expeditious review of the validity of IXI’s ’033 patent. By pursuing new claims in
`
`ex parte reexamination, IXI frustrated the purposes of Apple’s IPR and circumvented
`
`the Board’s amendment rules. Joinder is proper to rectify IXI’s tactics and allow
`
`Apple to complete the inter partes review challenge to IXI’s ’033 patent it previously
`
`sought.
`
`Here, the most efficient and just outcome is to allow joinder. As noted in the
`
`Petition, IXI obtained the Challenged Claims through gamesmanship—playing the
`
`odds of different proceedings before the USPTO in order to avoid the effect of this
`
`Board’s earlier determination of unpatentability and to avoid having its substitute
`
`claims challenged by Apple. If the Board finds this petition untimely and fails to
`
`join this IPR with the earlier IPR, Apple will be forced to litigate the validity of these
`
`claims in district court. This would reward IXI’s gamesmanship and result in an
`
`7
`
`
`
`
`outcome directly contrary to the purpose of IPR, which is to provide an alternative
`
`Attorney Docket No. 39521-0020IP3
`Proceeding No. IPR2019-00139
`
`to litigation without duplication of effort. Therefore, in the interest of expeditiously
`
`and efficiently resolving the dispute, the Board should exercise its discretion and join
`
`this IPR to the pending IPR of the ’033 patent. Gea Process Engr., Inc. Petr.,
`
`IPR2014-00051, 2014 WL 1253170, *6 (PTAB Mar. 10, 2014) (“our consideration
`
`of the amended claims in the reexamination certificate at this time advances our
`
`obligation to secure the ‘just, speedy, and inexpensive resolution’ of every
`
`proceeding”).
`
`B. Consolidation Is Appropriate Because of the Significant Overlap
`Between the Issues, Art, and Evidence in the Present Petition and the Prior
`IPR
`
`Consolidation with Apple’s previous IPR is appropriate because the issues
`
`raised in Apple’s current challenge significantly overlap with the issues raised in
`
`Apple’s previous IPR. As noted in Apple’s petition, the claims challenged in this
`
`petition share many limitations with the claims originally (and successfully)
`
`challenged in Apple’s original IPR. The Board has already found these limitations
`
`to be present in the prior art and has already examined the motivations of skilled
`
`artisan at the time of the invention—findings that have already been affirmed by the
`
`Federal Circuit. Apple cites the same prior art that was successfully used in Apple’s
`
`previous IPR to show that these limitations are still present in the prior art in the
`
`instant petition, thus (for these limitations) there is a complete overlap with Apple’s
`
`8
`
`
`
`
`previous IPR. These issues need not—and cannot—be relitigated should the present
`
`Attorney Docket No. 39521-0020IP3
`Proceeding No. IPR2019-00139
`
`petition be joined with Apple’s previous IPR. As a result, the issues to be addressed
`
`in the present IPR are narrower that what would normally be involved in an
`
`independent petition. In addition, the present petition involves the same parties as
`
`the previous IPR, and Apple has turned to the same expert that was involved in the
`
`previous proceeding.
`
`The only new issues to be addressed relate to the additional limitations of the
`
`claims emerging from re-examination. For new claim 65, these added limitations
`
`include limitations directed to: (1) router software, (2) “a speaker, a microphone, and
`
`a touchscreen;” (3) a “telephony application” used to place phone calls; (4) a
`
`“personal information manager application” which includes basic calendar, to-do
`
`list, emails, or contacts functionality; and (5) a “location application,” such as a basic
`
`mapping application, “for providing a current location” of the device. Marchand
`
`(the primary reference from IPR2015-01444) itself renders obvious several of these
`
`features because Marchand discloses a mobile phone and a skilled artisan would
`
`have found these features obvious to include in a mobile phone before IXI’s ’033
`
`patent. Indeed, the ’033 patent never contends that its invention relates to these
`
`features and only provides limited disclosure of them. And, for features not
`
`explicitly disclosed by Marchand, the Petition relies on only one new prior art
`
`9
`
`
`
`
`reference, Williams, to demonstrate how each of the new features lacking in
`
`Attorney Docket No. 39521-0020IP3
`Proceeding No. IPR2019-00139
`
`Marchand were well-known and obvious to include in Marchand’s mobile phone.
`
`As to the challenged dependent claims and claim 123, only two additional
`
`prior art references are needed to address them. Specifically, 802.11b is provided
`
`for disclosure of “software for 802.11 communications” (standard WiFi software)
`
`and Chen is cited for disclosure of “a GPRS baseband software component.” Thus,
`
`Apple has cited just three, additional prior art references to show how each of the
`
`added limitations in the challenged claims is present in the prior art and does not
`
`justify patentability.
`
`Further, Apple diligently filed the present petition challenging these additional
`
`limitations shortly after the Board regained jurisdiction over the previous IPR from
`
`the Federal Circuit. Thus, Apple’s request for joinder is similar to situations in which
`
`the Board has previously joined proceedings. For example, in Ariosa Diagnostics v.
`
`Isis Innovation, Ltd., the Board granted the petitioner’s motion for joinder (which
`
`patent owner opposed), finding that joinder was appropriate because the two
`
`proceedings “involve the same parties and the same patent” and because the petition
`
`to be joined “challenge[d] claims that are dependent on claims challenged in” the
`
`existing trial. Ariosa Diagnostics v. Isis Innovation, Ltd., IPR2013-00250, Paper 24
`
`at 2-3 (PTAB Aug. 12, 2013). Here, though the reexamination certificate should be
`
`considered a different “patent” for application of the time bar, the reexamination
`
`10
`
`
`
`
`certificate and the original patent challenged in the previous proceeding share the
`
`Attorney Docket No. 39521-0020IP3
`Proceeding No. IPR2019-00139
`
`same specification and involve many of the same limitations. In Ariosa, the Board
`
`also pointed to the fact that the joined proceedings “involve[d] much of the same
`
`prior art” and “[t]he only additional prior art cited in the instant proceeding was
`
`added to address the limitations of the dependent claims.” See id. The situation is
`
`similar here—Apple cites the same prior art for the many overlapping limitations
`
`from claims that were challenged in Apple’s original IPR, and the only new prior art
`
`is directed to limitations that have been added to the original subject matter. Lastly,
`
`in Ariosa, the Board found significant that the expert used in both proceedings was
`
`the same—which is also true here. See id. Thus, given these overlaps, joinder would
`
`be appropriate according to the Board’s previous decisions. See id.; see also, e.g.,
`
`Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 15, at 3-4 (PTAB Feb.
`
`25, 2013) (granting joinder because the “same patents and parties are involved in
`
`both proceedings,” there was “overlap in the cited prior art,” there was “no
`
`discernible prejudice to either party,” petitioner was “diligent and timely in filing the
`
`motion,” and there was no “undue delay”); ABB Inc. v. ROY-G-BIV Corp., IPR2013-
`
`00282, Paper 15, at 3 (PTAB Aug. 9, 2013) and IPR2013-00286, Paper 14, at 3
`
`(PTAB Aug. 9, 2013) (granting joinder because the cases “involve[] the same parties,
`
`the same patent, and much of the same prior art” and the “prior art references . . .
`
`substantially overlap”); LaRose Indus. v. Capriola Corp., IPR2013-00121, Paper 11,
`
`11
`
`
`
`
`at 23-24 (PTAB Jun. 28, 2013) (granting joinder in part because the cases
`
`Attorney Docket No. 39521-0020IP3
`Proceeding No. IPR2019-00139
`
`“involve[d] the same patent and parties, and there is some overlap in the asserted
`
`prior art . . . [and t]here also is no discernible prejudice to either party”); Cardiocom,
`
`LLC v. Robert Bosch Healthcare Sys., Inc., IPR2013-00469, Paper 21, at 13-15
`
`(PTAB Jan. 28, 2014) (granting joinder in part because the cases “involve[d] the
`
`same patent, parties, and prior art[, and t]here also is no discernible prejudice to
`
`either party”).
`
`C. Consolidation Will Have Little Impact on the Schedule for the Prior
`IPR Because the Board Has Already Issued its Final Written Decision, and
`Any Concerns Could Be Addressed By An Abbreviated Briefing Schedule
`In this factor, the Board considers whether joinder would impact the Board’s
`
`ability to issue a final written decision within the statutory time period. In this case,
`
`this is not a concern, as the Board has already met the statutory deadline by issuing
`
`a final written decision finding all claims previously challenged to be unpatentable.
`
`That decision has been affirmed by the Federal Circuit, and the Board regained
`
`jurisdiction over the previous IPR when the Federal Circuit issued its mandate on
`
`October 17. There are no deadlines left to meet. Without any deadlines to meet, the
`
`previous IPR may continue for the time period necessary to resolve the new issues
`
`raised in the present IPR petition.
`
`As for timing of the briefing, any concerns about delay could be alleviated if
`
`the Board adopts an abbreviated briefing schedule—similarly to how the Board
`
`12
`
`
`
`
`addresses remands from the Federal Circuit. In such situations, the PTO has set forth
`
`Attorney Docket No. 39521-0020IP3
`Proceeding No. IPR2019-00139
`
`guidance suggesting that the Board “issue decisions on remanded cases within six
`
`months of the Board’s receipt of the Federal Circuit’s mandate.” PTAB Standard
`
`Operating Procedure 9, available at https://goo.gl/1VypwC. Given the overlap in
`
`the present petition and Apple’s previous challenge, the issues to be decided are
`
`narrow—similar to what might happen if the Federal Circuit remands to the Board,
`
`adopting a similar procedure here may be appropriate.
`
`CONCLUSION
`
`For the foregoing reasons, Apple requests that the Board consolidate this
`
`present petition for IPR with pending Case No. IPR2015-01444.
`
`Respectfully submitted,
`
`
`
`
`
`
`/W. Karl Renner/
`W. Karl Renner, Reg. No. 41,265
`Jeremy J. Monaldo, Reg. No. 58,680
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: November 8, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`13
`
`
`
`
`
`Dated: November 8, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Attorney Docket No. 39521-0020IP3
`Proceeding No. IPR2019-00139
`
`
`
`
`
`
`
`/Jeremy J. Monaldo/
`W. Karl Renner, Reg. No. 41,265
`Jeremy J. Monaldo, Reg. No. 58,680
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`Attorneys for Petitioner
`
`14
`
`
`
`Attorney Docket No. 39521-0020IP3
`Proceeding No. IPR2019-00139
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
`
`certifies that on November 8, 2018, a complete and entire copy of this Petitioner’s
`
`Motion for Joinder and/or Consolidation was provided via Federal Express, to the
`
`Patent Owner by serving the correspondence address of record as follows:
`
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`SOUTHFIELD MI 48075
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Diana Bradley/
`
`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
