Case IPR2019-00181
`Patent 7,039,033 B2
`Attorney Docket No. 0190104-006USIPR
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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.
`
`IXI IP, LLC
`Patent Owner.
`____________
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`Case IPR2019-00181
`Patent 7,039,033 B2
`____________
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`PATENT OWNER’S OPPOSITION
`TO MOTION FOR JOINDER
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`Patent 7,039,033 B2
`Attorney Docket No. 0190104-006USIPR
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`IXI IP, LLC
`Patent Owner.
`____________
`
`Case IPR2019-00181
`Patent 7,039,033 B2
`____________
`
`PATENT OWNER’S OPPOSITION
`TO MOTION FOR JOINDER
`
`
`
`
`
`Case IPR2019-00181
`Patent 7,039,033 B2
`Attorney Docket No. 0190104-006USIPR
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`TABLE OF CONTENTS
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`Page
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`I.
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`APPLE’S MOTION IS UNAUTHORIZED AND THUS IMPROPER. .. 2
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`II.
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`JOINDER MAY NOT BE GRANTED UNDER § 315(c). ......................... 3
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`III. CONSOLIDATION MAY NOT BE GRANTED UNDER § 315(d). ........ 9
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`A.
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`Consolidation Is Barred By § 315(b). .................................................10
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`Apple’s Petitions May Not Be Consolidated With An IPR That
`Is Not “Pending.” ................................................................................12
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`B.
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`i
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`Case IPR2019-00181
`Patent 7,039,033 B2
`Attorney Docket No. 0190104-006USIPR
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`TABLE OF AUTHORITIES
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`Page(s)
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`COURT DECISIONS
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`Hall v. Hall,
`138 S. Ct. 1118 (2018) ........................................................................................14
`
`Kippen v. Pack,
`2012 WL 5397986 (D. Utah Nov. 2, 2012) .......................................................... 9
`
`Medicines Co. v. Mylan Inc.,
`257 F. Supp. 3d 1023 (N.D. Ill. 2017) .................................................................. 9
`
`
`
` AGENCY DECISIONS
`
`ABB Inc. v. ROY-G-BIV Corp.,
`IPR2013-00282, Paper 15 (PTAB Aug. 9, 2013) ................................................. 4
`
`ABB Inc. v. ROY-G-BIV Corp.,
`IPR2013-00286, Paper 14 (PTAB Aug. 9, 2013) ................................................. 4
`
`Acrux DDS Pty Ltd. v. Kaken Pharm. Co. Ltd.,
`IPR2017-00190, Ex. 2203 (PTAB Jul. 20, 2018) (emailed order) .....................13
`
`Acrux DDS Pty Ltd. v. Kaken Pharm. Co. Ltd.,
`IPR2017-00190, Paper 98 (PTAB POP Dec. 10, 2018) .....................................13
`
`Aerohive Networks, Inc. v. ChriMar Sys., Inc.,
`IPR2016-01757, Paper 11 (PTAB Feb. 3, 2017) .................................................. 6
`
`Amneal Pharms., LLC v. Endo Pharms. Inc.,
`IPR2014-01365, Paper 13 (PTAB Feb. 4, 2015) .................................................. 4
`
`Apple Inc. v. Grobler,
`IPR2014-00060, Paper 12 (PTAB Oct. 29, 2013) ................................................ 7
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`Apple Inc. v. Grobler,
`IPR2014-00060, Paper 15 (PTAB Apr. 8, 2014) .............................................7, 8
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`ii
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`Case IPR2019-00181
`Patent 7,039,033 B2
`Attorney Docket No. 0190104-006USIPR
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`Ariosa Diagnostics v. ISIS Innovation Ltd.,
`IPR2013-00250, Paper 24 (PTAB Sept. 3, 2013) ................................................. 4
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`Cardiocom, LLC v. Robert Bosch Healthcare Sys., Inc.,
`IPR2013-00469, Paper 21 (PTAB Jan. 28, 2014) ................................................ 4
`
`Dr. Reddy’s Labs. S.A. v. MonoSol Rx, LLC,
`IPR2017-01582, Paper 10 (PTAB Oct. 5, 2017) .................................................. 5
`
`Fifth Third Bank v. Stambler,
`IPR2014-00244, Paper 4 (PTAB Dec. 17, 2013) ................................................. 6
`
`Fresenius Kabi USA, LLC v. Hospira Inc.,
`IPR2017-01055, Paper 10 (PTAB Sep. 6, 2017) (per curiam) .........................5, 6
`
`Google, Inc. v. PersonalWeb Techs.,
`IPR2014-00977, Paper 10 (PTAB Oct. 30, 2014) ................................................ 6
`
`Hulu LLC v. Sound View Innovations, LLC,
`IPR2018-00017, Paper 13 (PTAB Jan. 26, 2018) ................................................ 5
`
`Institut Straumann AG v. Sirona Dental Sys. GmbH,
`IPR2015-01190, Paper 40 (PTAB Nov. 9, 2018) ................................................. 9
`
`Kyocera Corp. v. SoftView LLC,
`IPR2013-00004, Paper 15 (PTAB Apr. 24, 2013) ............................................... 4
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`LaRose Indus., LLC v. Capriola Corp.,
`IPR2013-00121, Paper 11 (PTAB June 28, 2013) ............................................... 4
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`LG Elecs., Inc. v. Cellular Comm’ns Equip. LLC,
`IPR2016-00711, Paper 9 (PTAB May 17, 2016) ................................................. 6
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`Microsoft Corp. v. Proxyconn, Inc.,
`IPR2013-00109, Paper 14 (PTAB Feb. 25, 2013) ................................................ 5
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`Nintendo of Am., Inc. v. Motion Games, LLC,
`IPR2014-00164, Paper 51 (PTAB May 15, 2015) ............................................... 2
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`Case IPR2019-00181
`Patent 7,039,033 B2
`Attorney Docket No. 0190104-006USIPR
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`PAR Pharm., Inc. v. MonoSol Rx, LLC,
`IPR2017-01557, Paper 9 (PTAB Oct. 5, 2017) ................................................5, 6
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`Qualcomm Inc. v. Bandspeed, Inc.,
`IPR2015-01577, Paper 21 (PTAB Nov. 16, 2015) ............................................... 7
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`Samsung Elecs. Co., Ltd. v. Va. Innovation Scis., Inc.,
`IPR2014-00557, Paper 10 (PTAB June 13, 2014) ............................................... 5
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`SEGA of Am., Inc. v. Uniloc USA, Inc.,
`IPR2016-00427, Paper 14 (PTAB June 2, 2016) ................................................. 6
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`Sony Comput. Ent’t of Am. LLC v. Grobler,
`IPR2013-00076, Paper 20 (PTAB Oct. 7, 2013) .................................................. 7
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`Standard Innovation Corp. v. Lelo, Inc.,
`IPR2014-00907, Paper 10 (PTAB Dec. 1, 2014) ...............................................11
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`Taiwan Semiconductor Mfg. Co., Ltd. v. ZOND, LLC,
`IPR2014-00781, Paper 5 (PTAB May 29, 2014) (expanded panel) .................... 2
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`Target Corp. v. Destination Maternity Corp.,
`IPR2014-00508, Paper 28 (PTAB Feb. 12, 2015) (expanded panel) .................12
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`Toyota Motor Corp. v. Am. Vehicular Scis. LLC,
`IPR2015-00261, Paper 10 (PTAB Jan. 29, 2015) ................................................ 6
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`Ubisoft, Inc. v. Uniloc USA, Inc.,
`IPR2016-00414, Paper 16 (PTAB June 2, 2016) ................................................. 6
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`
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`STATUTES
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`35 U.S.C. § 315(b) .................................................................................. 1, 10, 11, 12
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`35 U.S.C. § 315(c) ...............................................................................................3, 10
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`35 U.S.C. § 315(d) ........................................................................................... passim
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`Case IPR2019-00181
`Patent 7,039,033 B2
`Attorney Docket No. 0190104-006USIPR
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`REGULATIONS
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`37 C.F.R. § 1.197(b) ................................................................................................12
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`37 C.F.R. § 42.122(a) ........................................................................................ 11, 12
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`37 C.F.R. § 42.20(b) .................................................................................................. 3
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`37 C.F.R.§ 42.122(b) ...................................................................................... 1, 2, 11
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`
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`OTHER AUTHORITIES
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`2 MOORE'S MANUAL--FEDERAL PRACTICE AND PROCEDURE § 20.02 (2018) ..........13
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`MPEP § 1216.01 ......................................................................................................12
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`Case IPR2019-00181
`Patent 7,039,033 B2
`Attorney Docket No. 0190104-006USIPR
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`EXHIBIT LIST
`
`2001
`
`Inter Partes Review Certificate, IPR2014-01444, Jan. 19, 2019
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`2002
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`2003
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`IXI Mobile (R&D) Ltd. et al. v. Apple Inc., 1-14-cv-07954 (S.D.N.Y.),
`Dkt. 1 (Complaint) (filed Oct. 2, 2014)
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`IXI Mobile (R&D) Ltd. et al. v. Apple Inc., 1-14-cv-07954 (S.D.N.Y.),
`Dkt. 8 (Affidavit of Service)
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`vi
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`Apple was served with a complaint alleging infringement of the ’033 patent
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`on October 3, 2014, over four years ago. In compliance with the 35 U.S.C.
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`§ 315(b) bar, Apple and others filed IPR2015-01444 (“1444 IPR”) on June 19,
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`2015. That proceeding concluded over two years ago. The Board issued a final
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`written decision on December 21, 2016. The Federal Circuit affirmed on
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`September 10, 2018 and issued its mandate on October 17, 2018. And the Director
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`issued the IPR certificate on January 19, 2019. Ex. 2001.
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`Now, however, Apple has filed six more petitions for review of the ’033
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`patent, along with six motions for “joinder and/or consolidation” with the 1444
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`IPR.1 But the 1444 IPR is over. Apple seeks joinder and/or consolidation with a
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`proceeding that is no longer pending, has been affirmed, and is concluded. The
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`Office has never granted a request like Apple’s request. It is barred as a matter of
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`law for multiple independent reasons.
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`First, motions for joinder must be filed “no later than one month after the
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`institution date of any inter partes review for which joinder is requested.” 37
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`C.F.R.§ 42.122(b). Because the 1444 IPR was instituted on December 30, 2015,
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`the deadline to file a motion for joinder passed over three years ago. Apple
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`requested no authorization to file its motion. It therefore may not be granted.
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`1 IPR2019-00124, -00125, -00139, -00140, -00141, and -00181. For the Board’s
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`convenience, this opposition is substantially identical as to all six motions.
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`1
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`Second and third, it is well-settled that an IPR may not be joined or
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`consolidated with another IPR in which the Board has issued its final decision
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`terminating the case and the time for appeal has expired or any appeal has
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`terminated. Apple provides no authority to the contrary. The authorities cited in
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`Apple’s motion all involved joinder to, or consolidation with, proceedings that
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`were still pending before the Board. Joinder and consolidation with a case that is
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`not pending is not available for good reasons. Petitioners, patent owners, courts
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`and others who look to the Board’s decisions for guidance must be able to be
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`confident that a decision is final, and that a proceeding actually concluded when
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`judgment was entered.
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`For these and other reasons, Apple’s motion must be denied.
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`I.
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`APPLE’S MOTION IS UNAUTHORIZED AND THUS IMPROPER.
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`“Any request for joinder must be filed, as a motion under § 42.22, no later
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`than one month after the institution date of any inter partes review for which
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`joinder is requested.” 37 C.F.R.§ 42.122(b). After that, authorization is required.
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`See Taiwan Semiconductor Mfg. Co., Ltd. v. ZOND, LLC, IPR2014-00781, Paper
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`5, 2 (PTAB May 29, 2014) (expanded panel) ; see also Nintendo of Am., Inc. v.
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`Motion Games, LLC, IPR2014-00164, Paper 51, 26-27 (PTAB May 15, 2015).
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`The 1444 IPR was instituted December 30, 2015. IPR2015-01444, Paper 8. As a
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`result, any motion for joinder under Rule 42.122(b) had to be filed no later than
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`2
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`
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`January 29, 2016. But Apple filed this motion nearly three years later—without
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`authorization. And Apple does not even acknowledge that its motion is untimely
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`under § 42.122 and 35 U.S.C. § 315(c).2
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`Apple says its motion “is made specifically pursuant to [subsection] 315(d)
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`of the Patent Act, and not [subsection] 315(c).” Pet. 5. If this is a § 315(d) motion,
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`such motions always require authorization. 37 C.F.R. § 42.20(b). And Apple has
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`no such authorization, and has not requested authorization.
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`Because it is unauthorized, Apple’s motion may not be entered. That is
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`enough to procedurally deny the motion.
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`II.
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`JOINDER MAY NOT BE GRANTED UNDER § 315(c).
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`To the extent Apple is seeking joinder under § 315(c), its motion may not be
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`granted because it seeks joinder to a concluded case.
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`2 Apple says it filed these motions “to challenge the patentability of the new claims
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`added during [the ’033 patent’s] reexamination.” Mot. 3. But the reexamination
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`certificate issued a year ago, on February 1, 2018—over nine months before
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`Apple’s petitions and motions. Ex. 1001, 22. The fact that the appeal from the
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`1444 IPR was pending for most of that time is not a reason for Apple to be allowed
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`to violate the rules even more, however. It is just another demonstration of the fact
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`that the rules do not contemplate what Apple is seeking.
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`3
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`
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`The Director has never done what Apple is requesting: grant joinder to a
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`case that is no longer pending. The reason is simple: no statute or rule allows it.
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`Apple cites a number of allegedly supportive Board decisions in its motion.
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`But all of Apple’s cited decisions involve the granting of joinder to a pending IPR,
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`not a concluded IPR. ABB Inc. v. ROY-G-BIV Corp., IPR2013-00286, Paper 14
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`(PTAB Aug. 9, 2013) (granting joinder, unopposed by patent owner, with then-
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`pending IPR2013-00074); ABB Inc. v. ROY-G-BIV Corp., IPR2013-00282, Paper
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`15 (PTAB Aug. 9, 2013) (granting joinder, unopposed by the patent owner, with
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`then-pending IPR2013-00062); Amneal Pharms., LLC v. Endo Pharms. Inc.,
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`IPR2014-01365, Paper 13 (PTAB Feb. 4, 2015) (granting-in-part joinder with
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`then-pending IPR2014-00360); Ariosa Diagnostics v. ISIS Innovation Ltd.,
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`IPR2013-00250, Paper 24 (PTAB Sept. 3, 2013) (granting joinder with then-
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`pending IPR2012-00022 because, inter alia, it would “only add 6 additional weeks
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`beyond the original Scheduling Order . . . , allowing for a final written decision
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`within one year of institution.”); Cardiocom, LLC v. Robert Bosch Healthcare Sys.,
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`Inc., IPR2013-00469, Paper 21 (PTAB Jan. 28, 2014) (granting joinder with then-
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`pending IPR2013-00468, in which institution was entered the very same day);
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`Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 (PTAB Apr. 24, 2013)
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`(authorizing Apple to file third-party motions for joinder in then-pending IPR2013-
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`00004 and IPR2013-00007); LaRose Indus., LLC v. Capriola Corp., IPR2013-
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`4
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`00121, Paper 11 (PTAB June 28, 2013) (granting joinder with then-pending
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`IPR2013-00120, which was instituted on same day 00121 petition was filed);
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`Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 14 (PTAB Feb. 25,
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`2013) (granting joinder with then-pending IPR2012-00026, as the patent owner
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`“encouraged” the Board to do, where, inter alia, petitioner “proceeded
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`expeditiously in filing a second Petition after learning that additional claims were
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`being asserted” and joinder “w[ould] not unduly delay the resolution of either
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`proceeding”); Samsung Elecs. Co., Ltd. v. Va. Innovation Scis., Inc., IPR2014-
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`00557, Paper 10 (PTAB June 13, 2014) (granting joinder with then-pending
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`IPR2013-00571 where joinder motion was filed within one month after institution
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`of trial in IPR2013-00571).
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`The Director (or the Board) has considered on many occasions a motion for
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`joinder to a case that is no longer pending. In many of those cases, the petitioner,
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`like Apple here, argued that joinder would be efficient and fair and would further
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`the just, timely and inexpensive resolution of issues. Yet in each case, the Board
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`has held it may not grant the request because the other case had been terminated by
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`the Board, rendering the request for joinder to that case moot as a matter of law.
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`See, e.g., Hulu LLC v. Sound View Innovations, LLC, IPR2018-00017, Paper 13, 1
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`(PTAB Jan. 26, 2018); PAR Pharm., Inc. v. MonoSol Rx, LLC, IPR2017-01557,
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`Paper 11, 5 (PTAB Oct. 5, 2017); Dr. Reddy’s Labs. S.A. v. MonoSol Rx, LLC,
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`5
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`
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`IPR2017-01582, Paper 10, 2-3 (PTAB Oct. 5, 2017); Fresenius Kabi USA, LLC v.
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`Hospira Inc., IPR2017-01055, Paper 10, 5-6 (PTAB Sep. 6, 2017) (per curiam);
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`Aerohive Networks, Inc. v. ChriMar Sys., Inc., IPR2016-01757, Paper 11, 2-3
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`(PTAB Feb. 3, 2017); Ubisoft, Inc. v. Uniloc USA, Inc., IPR2016-00414, Paper 16,
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`5 (PTAB June 2, 2016); LG Elecs., Inc. v. Cellular Comm’ns Equip. LLC,
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`IPR2016-00711, Paper 9, 2 (PTAB May 17, 2016); InnoPharma Licensing, Inc. v.
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`Senju Pharm. Co., Ltd., IPR2015-00902, Paper 18, 2 (PTAB Aug. 7, 2015); Toyota
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`Motor Corp. v. Am. Vehicular Scis. LLC, IPR2015-00261, Paper 10, 3-7 (PTAB
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`Jan. 29, 2015); Google, Inc. v. PersonalWeb Techs., IPR2014-00977, Paper 10, 5-6
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`(PTAB Oct. 30, 2014).3 The Board has so found even if the movant’s petition is
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`otherwise time-barred under §315(b),4 even if joinder is unopposed by the
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`petitioner in the other case,5 and even if the other proceeding is terminated on the
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`same day the motion for joinder is decided.6
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`3 Accord, e.g., Fifth Third Bank v. Stambler, IPR2014-00244, Paper 4, 2 (PTAB
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`Dec. 17, 2013) (denying request to file motion for joinder on same basis).
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`4 See, e.g., PAR, IPR2017-01557, Paper 9, 2-3 (PTAB Oct. 5, 2017); Fresenius,
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`IPR2017-01055, Paper 10, 6; Google, IPR2014-00977, Paper 10, 3.
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`5 E.g., PAR Pharm., IPR2017-01557, Paper 9, 2.
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`6 See, e.g., SEGA of Am., Inc. v. Uniloc USA, Inc., IPR2016-00427, Paper 14, 5
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`(PTAB June 2, 2016). In a few cases the Board has held earlier-filed cases in
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`6
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`Apple is hardly unaware of this. It turns out this is not the first time Apple
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`has filed unprecedented, untimely requests to join an already completed IPR.
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`In Apple Inc. v. Grobler, IPR2014-00060/61, Apple filed petitions and
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`motions for joinder seeking to join Sony Computer Entertainment of America LLC
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`v. Grobler, IPR2013-00076. But the Board had terminated IPR2013-00076 a few
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`days before Apple filed its petitions and motions. IPR2013-00076, Paper 20
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`(PTAB Oct. 7, 2013). The Board denied Apple’s joinder motions as moot,
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`explaining that “when Apple’s motions were filed . . . , there was no proceeding for
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`Apple to join.” IPR2014-00060, Paper 12, 2 (PTAB Oct. 29, 2013).
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`Apple requested rehearing. The Board reaffirmed its denial. The Board
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`explained that “Apple’s Motions requested that the Board first revive a terminated
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`proceeding, and then waive the rules that would ordinarily prevent Apple from
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`joining that proceeding.” Id., Paper 15, 3 (PTAB Apr. 8, 2014). “Granting
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`Apple’s requests [for joinder to a terminated case] would . . . not facilitate the
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`public interest because petitioners, patent owners, courts and others who look to
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`abeyance despite requests to terminate them, and then granted motions for joinder
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`to those cases. E.g., Qualcomm Inc. v. Bandspeed, Inc., IPR2015-01577, Paper 21
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`(PTAB Nov. 16, 2015). But those cases hurt rather than help Apple. In those
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`cases, the motions were not moot precisely because the other cases were still
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`pending.
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`7
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`the Board’s decisions for guidance could not be confident that a decision is final or
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`that a proceeding actually concluded when judgment was entered.” Id.
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`
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`To be sure, in the Grobler cases petitioner Apple sought to join someone
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`else’s terminated IPR, while in the present case Apple is seeking to join its own
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`terminated IPR. But granting Apple’s request here would pose even greater public
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`interest problems than it did in the Grobler cases. In the Grobler cases, the case
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`Apple sought to join was terminated just a few days before Apple filed its motions.
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`Here, the Board entered its final 1444 decision years ago—and it has progressed
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`through appeal, and the Director has issued the certificate in the IPR. In fact, the
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`implications of Apple’s argument are startling. If joinder may be granted here,
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`then every IPRs ever instituted may potentially be “reviv[ed]” (Grobler, IPR2014-
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`00060, Paper 15, 3) in the same way, as long as the patent-at-issue remains in
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`force.
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`
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`Apple appears to argue that the fact that the 1444 IPR was appealed
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`somehow lends support to Apple’s request to revive and join that concluded case.
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`Mot. 12 (arguing that “the Board regained jurisdiction over the previous IPR when
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`the Federal Circuit issued its mandate”). That is not correct. The appeal was
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`affirmed, not remanded. The Board has no mandate to reopen the case or take any
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`further action in it. Since “the Federal Circuit did not remand this case for any
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`further action,” there “is no case remaining to reopen, as all claims that were
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`8
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`
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`presented to this Court have been fully litigated and upheld on appeal.” Kippen v.
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`Pack, 2012 WL 5397986, *2 (D. Utah Nov. 2, 2012); accord, e.g., Institut
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`Straumann AG v. Sirona Dental Sys. GmbH, IPR2015-01190, Paper 40, 3 (PTAB
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`Nov. 9, 2018). The Federal Circuit’s affirmance in full, and issuance of the
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`mandate, conclusively “supports that the Federal Circuit believed this case was at
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`an end.” Medicines Co. v. Mylan Inc., 257 F. Supp. 3d 1023, 1032 (N.D. Ill.
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`2017).
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`III. CONSOLIDATION MAY NOT BE GRANTED UNDER § 315(d).
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`To the extent Apple is seeking consolidation under § 315(d), its motion may
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`not be granted because it is time-barred and seeks to consolidate a case that is not
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`pending.
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`As noted above (see Section I), Apple claims that its Motion is filed under
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`§ 315(d), which permits “consolidation” of multiple proceedings “before the
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`Office,” not §315(c), which permits “joinder.” Mot. 5. But consolidation under
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`§ 315(d) is unavailable. The § 315(b) bar date in this case does not have any even
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`arguable exception for “consolidation,” and even if it did, the Director may not
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`“consolidate” two cases before the Office unless both are pending before the
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`Office. Apple’s petition is not pending because it has not been instituted, and the
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`1444 IPR is no longer pending because it has been terminated.
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`9
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`
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`A. Consolidation Is Barred By § 315(b).
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`Apple concedes that there is a “§ 315(b) bar date” in this case. Mot. 3.
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`Apple was served with a complaint alleging infringement of the ’033 patent on
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`October 3, 2014, Ex. 2002 [complaint] ¶ 1; Ex. 2002 [service], 1, and therefore
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`Apple’s § 315(b) bar date passed over three years ago on October 2, 2015. Apple
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`contends that its petitions are exempt from the § 315(b) bar date because
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`supposedly “as laid out in [§] 315(c), . . . a petition will not be barred by § 315(b)
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`if it is joined to a proceeding resulting from a timely-filed petition.” Pet. 6. To the
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`extent this argument implicates § 315(c) and joinder under it, Patent Owner will
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`address this argument in the preliminary response. To the extent, however, that
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`this motion “is made specifically pursuant to [§] 315(d) . . . and not [§] 315(c),”
`
`Pet. 5 (emphasis added), and requests consolidation as opposed to joinder, the
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`§ 315(b) bar date blocks Apple’s request for consolidation.
`
`There is no even arguable exception from § 315(b) in § 315(d). Apple
`
`argues that “principles discussed in relation to [§] 315(c) are applicable to”
`
`§ 315(d) as well, and therefore, Apple argues, its subsection (d) consolidation
`
`request is exempt from the subsection (b) bar because its subsection (c) joinder
`
`request is. In other words, Apple is trying to amalgamate subsections (c) and (d)
`
`and make subsection (c)’s textual exception from subsection (b) somehow apply to
`
`subsection (d). Apple cites no decisions that have so found.
`
`10
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`
`
`
`
`Apple’s argument makes no sense. The text of subsection (d) contains no
`
`exception to subsection (b). The text of subsection (c) does. Apple may not read
`
`language into subsection (d) that simply is not there. And in fact, the Board has
`
`already rejected the argument.
`
`The Board has held that joinder and consolidation are not interchangeable,
`
`that § 315(d) does not have an exception to the § 315(b) one-year time bar, and that
`
`filing a motion to “join and/or consolidate” does not change this rule. In Standard
`
`Innovation Corp. v. Lelo, Inc., IPR2014-00907, the petitioner, like Apple, faced a
`
`subsection (b) bar, id., Paper 10, 3 (PTAB Dec. 1, 2014), and, like Apple, filed a
`
`“motion to join and/or consolidate,” id., Paper 3. The Board denied the request for
`
`joinder for other reasons—inter alia, because it “would likely significantly
`
`increase the complexity, time, and cost of the [other] IPR.” Id., Paper 10, 11. But
`
`the Board denied the request for consolidation on the basis that § 315(d) has no
`
`§ 315(b) exception:
`
`Petitioner treats joinder and consolidation as interchangeable;
`
`however, such is not the case. As we noted above, the Petition was
`
`filed more than one year after Petitioner was served with a complaint
`
`alleging infringement of the ’178 patent. The exception to the one-
`
`year time bar under § 315(b) applies to requests for joinder, but not
`
`consolidation. See 35 U.S.C. § 315(b); 37 C.F.R. § 42.122(a)–(b).
`
`Thus, Petitioner’s request for consolidation does not avoid the
`
`§ 315(b) bar.
`
`11
`
`
`
`
`
`Standard Innovation, IPR2014-00907, Paper 10, 10 (emphases added); see also
`
`Target Corp. v. Destination Maternity Corp., IPR2014-00508, Paper 28, 15 (PTAB
`
`Feb. 12, 2015) (expanded panel) (“With consolidation under § 315(d), there is no
`
`waiver of [the § 315(b) one-year bar] requirement”).
`
`
`
`Consolidation is barred by the one-year time bar.
`
`B. Apple’s Petitions May Not Be Consolidated With An IPR That Is
`Not “Pending.”
`
`Even if consolidation under § 315(d) were not barred under the time limit set
`
`forth in § 315(b), it would be barred under the time limit set forth in § 315(d).
`
`The express premise of Apple’s “consolidation” request is that “§ 315(d)
`
`does not provide for any time limit on when a party may request consolidation or
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`for when the board may consolidate proceedings.” Mot. 5. That premise is wrong.
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`Subsection 315(d) and its corresponding rule do set out a time limit. The Director
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`may consolidate an IPR with another proceeding before the Office involving the
`
`same patent only “during the pendency of the inter partes review.” 35 U.S.C.
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`§ 315(d); 37 C.F.R. § 42.122(a). When the other IPR is no longer “pend[ing],” that
`
`time limit has expired.
`
`12
`
`
`
`
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`The question of when “pendency” ends under § 315(d) has been answered,
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`and the answer dooms this request.7 Subsection 315(d) allows reissues to be stayed
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`“during the pendency of an inter partes review” of the same patent, and the Board
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`has often been asked to lift stays of reissues after the IPR’s final written decision.
`
`It ordinarily lifts the stay immediately, since the IPR is plainly no longer pending
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`under § 315(d). And even when it has not, the Board has held that, at the latest, an
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`IPR is no longer “pend[ing]” under § 315(d) “when either the time for appeal has
`
`expired and no appeal has been filed, or upon the exhaustion of any appeal from”
`
`the IPR. Acrux DDS Pty Ltd. v. Kaken Pharm. Co. Ltd., IPR2017-00190, Ex.
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`2203, 1 (PTAB Jul. 20, 2018) (emailed order); Paper 84, 3-4 (July 27, 2018)
`
`(requesting rehearing); Paper 98 (PTAB POP Dec. 10, 2018). Even under that
`
`meaning, both of these events have come to pass for the 1444 IPR. No matter how
`
`expansively § 315(d) is interpreted, the 1444 IPR is no longer “pend[ing].”
`
`Because the 1444 IPR is no longer pending under any definition of the word, it
`
`cannot be consolidated with anything.
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`Nor would that make any sense. “Courts may order consolidation as a
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`matter of convenience and economy in administration, but it does not merge the
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`suits into a single cause, nor change the rights of the parties.” 2 MOORE'S
`
`
`7 This answer is the same across many contexts and statutes. E.g., 37 C.F.R.
`
`§ 1.197(b) (when Office prosecutions are “terminated”); MPEP § 1216.01 (same).
`
`13
`
`
`
`
`
`MANUAL--FEDERAL PRACTICE AND PROCEDURE § 20.02 (2018); see also Hall v.
`
`Hall, 138 S. Ct. 1118, 1125, 1129 (2018). And it does not eliminate mandatory
`
`statutory requirements that would otherwise bar the case. See Hall, 138 S. Ct. at
`
`1130-31.
`
`For these reasons, in addition to those discussed above in connection with
`
`joinder, consolidation must be denied.
`
`The motion should be denied.
`
`
`
`
`
`
`
`Date: January 30, 2019
`
`
`Respectfully submitted,
`
`____/ Kenneth J. Weatherwax /_________
`
`Kenneth J. Weatherwax, Reg. No. 54,528
`LOWENSTEIN & WEATHERWAX LLP
`
`____/ Russell D. Slifer /_________
`
`Russell D. Slifer, Reg. No. 39,838
`SCHWEGMAN, LUNDBERG & WOESSNER
`
`
`
`
`
`14
`
`
`
`Case IPR2019-00181
`Patent 7,039,033 B2
`Attorney Docket No. 0190104-006USIPR
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the following documents were served
`by electronic service, by consent, on the date signed below:
`
`
`
`PATENT OWNER’S OPPOSITION
`TO MOTION FOR JOINDER
`
`EXHIBITS 2001-2003
`
`
`
`
`
`The names and address of the parties being served are as follows:
`
`
`W. Karl Renner
`Jeremy J. Monaldo
`
`IPR39521-0020IP6@fr.com
`monaldo@fr.com
`PTABInbound@fr.com
`axf-ptab@fr.com
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`____/Jason Linger/_________
`
`
`Date: January 30, 2019
`
`
`
`
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`
`
`
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