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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`IXI IP, LLC,
`Patent Owner.
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`Case IPR2019-00140
`Patent 7,039,033
`______________________
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`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
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`PETITIONER’S MOTION FOR JOINDER
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`
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`Proceeding No.: IPR2019-00140
`Attorney Docket: 39521-0020IP4
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`EXHIBITS
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`EXHIBIT 1001
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`U.S. Patent No. 7,039,033 to Haller et al. (“’033
`patent”)
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`EXHIBIT 1002
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`Prosecution History of the ’033 patent
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`EXHIBIT 1003
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`Declaration of Dr. Sayfe Kiaei
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`EXHIBIT 1004
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`Curriculum Vitae of Dr. Sayfe Kiaei
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`EXHIBIT 1005
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`EXHIBIT 1006
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`EXHIBIT 1007
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`International Publication No. WO 2001/76154 A2 to
`Marchand (“Marchand”)
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`U.S. Patent Application No. 09/541,529 to Marchand
`(“Marchand Priority”)
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`Handley et al., Request For Comments 2543 SIP:
`Session Initiation Protocol, The Internet Society, March,
`1999 (“RFC 2543”)
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`EXHIBIT 1008
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`U.S. Patent No. 6,836,474 to Larsson (“Larsson”)
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`EXHIBIT 1009
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`K. Arnold et al., The JINITM Specification, Addison-
`Wesley, June 1, 1999 (“JINI Spec.”)
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`EXHIBIT 1010
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`U.S. Patent No. 6,560,642 to Nurmann (“Nurmann”)
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`EXHIBIT 1011
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`U.S. Patent No. 6,771,635 to Vilander (“Vilander”)
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`EXHIBIT 1012
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`EXHIBIT 1013
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`U.S. Patent Application Publication No. 2002/0068608
`to Souissi (“Souissi”)
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`U.S. Patent No. 6,486,832 to Abramov, et al.
`(“Abramov”)
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`EXHIBIT 1014
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`U.S. Patent No. 7,193,965 to Nevo, et al. (“Nevo”)
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`EXHIBIT 1015
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`EXHIBIT 1016
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`U.S. Patent No. 6,556,222 to Chandrasekhar
`Narayanaswami (“Narayanaswami”)
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`International Publication No. WO 1999/22338 to
`Williams (“Williams”)
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`i
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`Proceeding No.: IPR2019-00140
`Attorney Docket: 39521-0020IP4
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`EXHIBIT 1017
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`U.S. Patent No. 7,155,163 to Cannon (“Cannon”)
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`EXHIBIT 1018
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`EXHIBIT 1019
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`EXHIBIT 1020
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`802.11b, “Supplement to IEEE Standard for Information
`Technology – Telecommunications and In-formation
`Exchange Between Systems – Local and Metropolitan
`Area Networks – Specific Requirements. Part 11:
`Wireless LAN Medium Access Control (MAC) and
`Physical Layer (PHY) Specifications: Higher-Speed
`Physical Layer Extension in the 2.4 GHz Band,” Print
`ISBN 0738118117, published January 20, 2000
`(“802.11b”)
`
`IEEE 802.11, “IEEE Standard for Information
`Technology—Telecommunications and Information
`Exchange Between Systems—Local and Metropolitan
`Area Networks—Specific requirements. Part 11:
`Wireless LAN Medium Access Control (MAC) and
`Physical Layer (PHY) Specifications,” ISBN 0-7381-
`1658-0, published August 20, 1999 (“802.11”)
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`A COLLECTION OF JINI TECHNOLOGY HELPER
`UTILITIES AND SERVICES SPECIFICATIONS
`(“JINI Collection”)
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`EXHIBIT 1021
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`U.S. Patent No. 5,465,401 to Thompson (“Thompson”)
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`EXHIBIT 1022
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`GSM Phase 2+ General Packet Radio Service GPRS:
`Architecture, Protocols, and Air Interface (“Bettstetter”)
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`EXHIBIT 1023
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`U.S. Patent No. 6,557,037 to Provino (“Provino”)
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`EXHIBIT 1024
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`U.S. Patent No. 6,028,848 to Bhatia (“Bhatia”)
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`EXHIBIT 1025
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`U.S. Patent No. 6,185,611 to Waldo, et al. (“Waldo”)
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`EXHIBIT 1026
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`Bluetooth Specification, Version 1.0B (“Bluetooth
`Spec.”)
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`EXHIBIT 1027
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`IPR2015-01443, Petition
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`EXHIBIT 1028
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`IPR2015-01444, Petition
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`ii
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`Proceeding No.: IPR2019-00140
`Attorney Docket: 39521-0020IP4
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`EXHIBIT 1029
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`IPR2015-01443, Final Written Decision
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`EXHIBIT 1030
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`IPR2015-01444, Final Written Decision
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`EXHIBIT 1031
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`EXHIBIT 1032
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`EXHIBIT 1033
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`Declaration of Dr. Sayfe Kiaei submitted in IPR2015-
`01444
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`Prosecution History of Reexamination Control No.
`90/013,925
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`U.S. Patent No. 6,073,036 to Heikkinen et al.
`(“Heikkinen”)
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`EXHIBIT 1034
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`U.S. Patent No. 5,422,656 to Allard et al. (“Allard”)
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`EXHIBIT 1035
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`U.S. Patent No. 6,801,778 to Koorapaty et al.
`(“Koorapaty”)
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`EXHIBIT 1036
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`U.S. Patent No. 5,786,789 to Janky (“Janky”)
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`EXHIBIT 1037
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`U.S. Patent No. 6,404,761 to Snelling et al. (“Snelling”)
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`EXHIBIT 1038
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`“Router Plugins: A Software Architecture for Next
`Generation Routers,” Computer Communication
`Review (1998), vol. 28, No. 4, p. 229-240 (“Router
`Plugins”)
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`EXHIBIT 1039
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`U.S. Patent No. 6,891,820 to Pham, et al. (“Pham”)
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`EXHIBIT 1040
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`U.S. Patent No. 6,775,258 to van Valkenburg, et al.
`(“van Valkenburg”)
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`EXHIBIT 1041
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`U.S. Patent No. 6,463,304 to Smethers (“Smethers”)
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`EXHIBIT 1042
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`U.S. Patent No. 6,983,310 to Rouse et al. (“Rouse”)
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`EXHIBIT 1043
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`U.S. Patent No. 6,138,022 to Strawczynski et al.
`(“Strawczynski”)
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`EXHIBIT 1044
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`U.S. Patent No. 6,754,833 to Black et al. (“Black”)
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`EXHIBIT 1045
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`U.S. Patent No. 6,580,916 to Weisshaar et al.
`(“Weisshaar”)
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`iii
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`Proceeding No.: IPR2019-00140
`Attorney Docket: 39521-0020IP4
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`EXHIBIT 1046
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`J. Newmarch, A Programmer’s Guide to Jini
`Technology, Apress, 2000 (“Newmarch”)
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`EXHIBIT 1047
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`U.S. Patent No. 6,728,323 to Chen et al. (“Chen”)
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`EXHIBIT 1048
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`HIGHLY INTEGRATED SINGLE-CHIP
`BASEBAND PROCESSOR FOR GSM HANDSETS
`(“Shohara”)
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`EXHIBIT 1049
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`U.S. Patent No. 6,970,940 to Vogel et al. (“Vogel”)
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`EXHIBIT 1050
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`U.S. Patent No. 6,622,017 to Hoffman (“Hoffman”)
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`EXHIBIT 1051
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`Email String Granting IXI’s Request to Extend the Due
`Date for IXI’s Opposition of Apple’s Joinder Motion
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`iv
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`Proceeding No.: IPR2019-00140
`Attorney Docket: 39521-0020IP4
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`I.
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`INTRODUCTION
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`Apple has, at every turn, brought legitimate challenges to the claims of the
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`’033 patent in as timely a manner as it could have given the unusual circumstances
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`of this case. Apple diligently pursued IPR of the ’033 patent—filing its original
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`petition for IPR well before the original statutory deadline—and Apple diligently
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`filed its present petition and request for joinder just weeks after the Board regained
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`jurisdiction over the original IPR and within ten months of those claims issuing.
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`Yet, IXI now claims that Apple should not be able to challenge the new claims
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`because Apple didn’t challenge the claims earlier (when they did not yet exist).
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`The Board should not reward IXI’s gamesmanship. IXI circumvented
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`Apple’s original challenge through seeking claims in another proceeding, and now
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`seeks to circumvent a real, adversarial challenge to those claims before the Office
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`by claiming that the challenge is untimely. The fault, though, for the timing of
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`Apple’s present petition lies entirely with IXI. IXI should not benefit from its own
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`delay and gamesmanship, and joinder should be granted.
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`II. ARGUMENT
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`Joinder of the present proceeding to Apple’s previous petition is warranted
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`as either joinder under § 315(c) or under § 315(d). As noted in Apple’s motion,
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`each of the factors considered by the Board weighs in favor of joinder: the claims
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`challenged in Apple’s current petition have significant overlap with the prior IPR,
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`1
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`Proceeding No.: IPR2019-00140
`Attorney Docket: 39521-0020IP4
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`the prior art involved is the same and/or very similar, and allowing joinder would
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`have no impact on the Board’s ability to meet the statutory deadline as the Board
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`has already issued a Final Written Decision. IXI does not dispute that each of
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`these factors weighs in favor of joinder. Instead, IXI argues that Apple’s petition
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`and motion for joinder are untimely because, according to IXI, the Federal
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`Circuit’s mandate and/or the PTO IPR certificate ended the original IPR; and (in
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`the case of § 315(d)) Apple’s petition is barred by § 315(b). None of IXI’s
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`timeliness arguments have merit under the circumstances.
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`A. Neither the Federal Circuit’s Mandate Nor the IPR Certificate
`Stand in the Way of Joinder
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`First, IXI argues that joinder and/or consolidation is inappropriate because,
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`according to IXI, Apple’s original IPR is no longer pending. See Resp., at 3-9; 12-
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`14. In particular, IXI argues Apple’s request for joinder should be denied because
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`the Federal Circuit’s mandate precludes further proceedings before the Board and
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`the PTO issued a certificate cancelling the claims challenged in Apple’s first IPR
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`after the Federal Circuit’s mandate prior to the Board’s consideration of this
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`motion. See id. IXI is wrong on both counts.
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`As to the Federal Circuit’s mandate, IXI misapprehends the mandate rule.
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`Contrary to IXI’s assertion that issuance of the mandate precludes any further
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`litigation in the IPR, the mandate rule precludes further litigation regarding “[o]nly
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`2
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`Proceeding No.: IPR2019-00140
`Attorney Docket: 39521-0020IP4
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`the issues actually decided—those within the scope of the judgment appealed from,
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`minus those explicitly reserved or remanded by the court.” Engel Indus., Inc. v.
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`Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999). Moreover, “every
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`appellate court judgment vests jurisdiction in the district court to carry out some
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`further proceedings.” Exxon Chem. Patents, Inc. v. Lubrizol Corp., 137 F.3d 1475,
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`1483 (Fed. Cir. 1998). “Frequently...the disposition of a case in the court of
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`appeals will require the district court to undertake more significant proceedings,”
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`even where the Federal Circuit’s appeal resulted in affirmance. Id. Here, there can
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`be no question that the claims raised in the present petitions were not at issue in
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`IXI’s appeal to the Federal Circuit; the mandate does not preclude joinder.
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`As to the IPR certificate, Apple’s petition and request for joinder were filed
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`well before the IPR certificate issued. The petition was filed back in early
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`November of 2018, and the certificate did not issue until January of 2019. (See
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`Paper 2); see also Ex. 2001. Notably, IXI requested an extension to respond to
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`Apple’s motion for joinder. See Ex. 1051. Apple did not oppose a limited
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`extension “under the assumption that the additional delay in briefing will not
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`negatively impact the substance of the motion.” Id. Ultimately, the Board granted
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`a two month extension, and, solely as a result of the extension, IXI’s response
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`came after the IPR certificate issued and explicitly relies on that delay in arguing
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`joinder should not be allowed. IXI should not benefit from its own delay.
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`3
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`Proceeding No.: IPR2019-00140
`Attorney Docket: 39521-0020IP4
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`In any event, Apple’s petition and request for joinder should be considered
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`as of the time it was filed because Apple seeks joinder with a proceeding to which
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`it is a party. Contrary to IXI’s assertion, this difference is significant. All of the
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`decisions cited by IXI involved attempts to join IPRs where the parties to the
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`original IPR sought to terminate. Unlike in those cases, continuation of the
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`proceeding is not contrary to the wishes of the party to the original IPR: Apple was
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`a party to the original IPR and is actively seeking to keep that IPR active through
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`its request for joinder. Just as a district court is free to amend or recall a judgment
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`at the behest of a party, the Board should be free to continue review of the claims
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`raised in Apple’s present IPR irrespective of whether the IPR certificate has issued
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`because the claims challenged in Apple’s petition could not have been challenged
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`previously. See FRCP 60(b) (a party may seek relief from a judgment because of
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`newly discovered evidence that could not have been discovered earlier).
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`B. Apple’s Request for Joinder Is Not Time-Barred
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`Although IXI acknowledges that the time-bar does not preclude joinder by
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`the plain language of the statute, IXI argues that should the Board limit Apple’s
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`request to be only under § 315(d) and thus time-barred. See Resp., at 10.
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`Apple made a request under both § 315(c) and § 315(d). IXI’s argument’s
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`only chance of succeeding relies on the Board finding that § 315(c) precludes
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`same-party joinder – an issue which a POP is currently considering. However,
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`4
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`Proceeding No.: IPR2019-00140
`Attorney Docket: 39521-0020IP4
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`should the Board overrule same-party joinder, the Board must re-consider the
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`application of the time-bar to requests for joinder under § 315(d). As noted by the
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`expanded panel in Target Corp. v. Destination Maternity Corp., the IPR statute
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`cannot be interpreted in a way that would “deprive the Board of any opportunity to
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`use either [§ 315(c) or § 315(d) to move forward in circumstances where a
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`petitioner in a prior inter partes proceeding seeks joinder of an issue to that
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`proceeding, and may not bring a separate petition because of a § 315(b) bar.” See
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`IPR2014-00508, Paper 28, 15 (PTAB Feb. 12, 2015).
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`C.
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`IXI’s Other Arguments Are Frivolous
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`IXI argues that Apple’s motion should be denied because Apple did not seek
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`prior authorization to file it, but the PTO trial practice guide specifically exempts
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`the requirement to seek authorization where “it is impractical for a party to seek
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`prior Board authorization,” such as motions included with petitions. See 77 Fed.
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`Reg. 48756, 48762 (Aug. 14, 2012). Moreover, the PTO’s rule that a motion for
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`joinder must be made within one month of institution (37 C.F.R. 42.122) is not a
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`statutory requirement, and may be waived by the Board pursuant to 37 C.F.R.
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`42.5(b)—which, given the unusual and difficult circumstances of this case, would
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`be appropriate.
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`III. CONCLUSION
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`Apple’s motion for joinder and/or consolidation should be granted.
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`5
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`Dated: February 28, 2019
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`Dated: February 28, 2019
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`Proceeding No.: IPR2019-00140
`Attorney Docket: 39521-0020IP4
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`Respectfully submitted,
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`/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
`
`
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`
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`/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
`
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` Attorneys for Petitioner
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`6
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`Proceeding No.: IPR2019-00140
`Attorney Docket: 39521-0020IP4
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) et seq. and 42.205(b), the undersigned
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`certifies that on February 28, 2019, a complete and entire copy of this Petitioner’s
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`Reply to Patent Owner’s Opposition to Petitioner’s Motion for Joinder was
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`provided via electronic service, to the Patent Owner by serving the correspondence
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`address of record as follows:
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`Kenneth J. Weatherwax, Nathan Lowenstein
`Edward Hsieh, Parham Hendifar, Patrick Maloney
`LOWENSTEIN & WEATHERWAX LLP
`1880 Century Park East, Suite 815
`Los Angeles, CA 90067
`
`Russell D. Slifer
`SCHWEGMAN, LUNDBERG & WOESSNER
`1600 TCF Tower, 121 S. 8th St.
`Minneapolis, MN 55402
`
`Sangeeta G. Shah, David S. Bir
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
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`Email: weatherwax@lowensteinweatherwax.com
`IXI_IPRs@lowensteinweatherwax.com
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`/Diana Bradley/
`Diana Bradley
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`(858) 678-5667
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