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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In re Inter Partes Review of:
`U.S. Patent No. 8,213,970
`Issued: July 3, 2012
`Application No.: 12/324,122
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`For: Method of Utilizing Forced Alerts for Interactive Remote
`Communications
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`FILED VIA E2E
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`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`37 C.F.R. §§ 42.22, AND 42.122(b)
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`U.S. Patent No. 8,213,970
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`Motion for Joinder
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`TABLE OF CONTENTS
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`Page
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`I.
`II.
`III.
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`STATEMENT OF PRECISE RELIEF REQUESTED ................................... 1
`BACKGROUND AND RELATED PROCEEDINGS ................................... 2
`STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 3
`A.
`Legal Standard ....................................................................................... 3
`B.
`Joinder is appropriate here because the petitions are
`substantively identical ........................................................................... 4
`Joinder will introduce no new grounds or issues. ................................. 4
`Joinder will not complicate the instituted IPR’s briefing or
`discovery ............................................................................................... 5
`Joinder will not impact the instituted IPR’s schedule ........................... 6
`E.
`F. Without joinder, Apple and the public may be prejudiced. .................. 6
`G.
`Joinder will not prejudice AGIS or Google. ......................................... 7
`IV. CONCLUSION ................................................................................................ 9
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`C.
`D.
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`i
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`U.S. Patent No. 8,213,970
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
`Apple Inc., (“Apple”) submits this Motion for Joinder to IPR2018-01079
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`
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`Motion for Joinder
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`concurrently with a Petition for Inter Partes Review (IPR), under 35 U.S.C. §
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`315(c) and 37 C.F.R. §§ 42.22 and 42.122(b), of claims 1 and 3-9 of U.S. Patent
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`No. 8,213,970 (“the ’970 Patent”). Google has indicated that it does not oppose
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`joinder. Apple has asked AGIS if it will oppose but has not yet received a
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`response.
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`Apple requests institution of IPR and party joinder with the pending,
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`instituted IPR titled, Google LLC v. AGIS Software Development, LLC, Case No.
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`IPR2018-01079 (“the Google IPR”), based on grounds identical to those in that
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`proceeding. Google LLC, Huawei Device USA Inc., Huawei Device Co., Ltd.,
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`Huawei Device (Dongguan) Co., Ltd., Huawei Technologies USA Inc., Huawei
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`Technologies Co., Ltd., and LG Electronics, Inc. initiated the Google IPR
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`proceeding by petitioning the Board on May 15, 2018. The Board instituted the
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`Google IPR on November 20, 2018. Apple timely files the Petition and this
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`motion within one month of the institution of the Google IPR. 37 C.F.R. §
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`42.122(b).
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`Joinder will efficiently resolve the challenges presented in the Petition and
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`the instituted grounds of the Google IPR and will not prejudice the patent owner or
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`the first petitioner, Google. Indeed, the patent owner will be unaffected. The
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`U.S. Patent No. 8,213,970
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`Petition is essentially identical to Google’s IPR petition—Google’s patentability
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`Motion for Joinder
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`arguments and supporting evidence were copied verbatim and fully adopted to
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`avoid introducing any new issues. Apple’s expert declaration submitted is from
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`the same declarant and is also essentially identical to the declaration submitted in
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`the Google IPR, changed only to reflect that Apple is the petitioner.1
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`Should the panel join the parties, Apple agrees to subordinate itself to the
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`typical “understudy” role, in line with common Board practice. Google will lead
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`the joined proceedings so long as it remains in the proceeding. If Google exits,
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`Apple will take over exactly where Google left off, as Apple has adopted the exact
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`same patentability arguments and evidence. In short, joinder will have a negligible
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`effect on the Google IPR’s substance and procedure.
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`II. BACKGROUND AND RELATED PROCEEDINGS
`The ’970 patent is assigned to AGIS Software Development LLC (“AGIS”
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`or “Patent Owner”). AGIS has asserted the ’970 patent against Apple and
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`numerous other parties in E.D. Tex.: AGIS Software Development LLC v. Apple
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`Inc., No. 2:17-cv-00516-JRG (E.D. Tex.); AGIS Software Development LLC v.
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`Huawei Device USA Inc. et al., No. 2:17-cv-00513 (E.D. Tex.); AGIS Software
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`1 Exs. 1020 and 1021 are redlines showing the differences between the Google and
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`Apple petitions and declarations.
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`U.S. Patent No. 8,213,970
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`Development LLC v. LG Electronics, Inc., No. 2:17-cv-00515 (E.D. Tex.); AGIS
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`Motion for Joinder
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`Software Development LLC v. ZTE Corporation et al., No. 2:17-cv-00517 (E.D.
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`Tex.); AGIS Software Development LLC v. HTC Corporation, No. 2:17-cv-00514
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`(E.D. Tex.).
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`In addition to the Google IPR mentioned in the preceding section, the ’970
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`patent was previously challenged by Apple Inc. in IPR2018-00821 (institution
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`denied October 23, 2018).
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`A. Legal Standard
`The Leahy-Smith America Invents Act (AIA) allows an IPR party to be
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`joined with a preexisting IPR. See generally Pub. L. No. 112-29, 125 Stat. 284
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`(2011). The statutory provision governing IPR joinder, 35 U.S.C. § 315(c), reads:
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`(c) JOINDER. – If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter
`partes review any person who properly files a petition under section
`311 that the Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a response,
`determines warrants the institution of an inter partes review under
`section 314.
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`The joinder motion should: (1) set forth the reasons why joinder is appropriate; (2)
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`identify any new grounds of unpatentability asserted in the petition; (3) explain
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`what impact (if any) joinder would have on the trial schedule for the existing
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`U.S. Patent No. 8,213,970
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`review; and (4) address specifically how briefing and discovery may be simplified.
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`Motion for Joinder
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`Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 17 at 3-4 (July
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`29, 2013).
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`B.
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`Joinder is appropriate here because the petitions are substantively
`identical
`When, as here, the petitions are identical, joinder should be granted as matter
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`of right. See 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen.
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`Kyl) (“The Office anticipates that joinder will be allowed as of right—if an inter
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`partes review is instituted on the basis of a petition, for example, a party that files
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`an identical petition will be joined to that proceeding, and thus allowed to file its
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`own briefs and make its own arguments.”) (emphasis added).
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`The following sections provide additional reasons joinder is appropriate here
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`and address the remaining Dell factors.
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`C.
`Joinder will introduce no new grounds or issues.
`As alluded to in the previous section, joinder is appropriate here because the
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`grounds and patentability arguments and evidence in the instant Petition are
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`identical to those in Google’s IPR. Indeed, Apple copied verbatim and adopted
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`Google’s patentability arguments and evidence to ensure that Apple presents no
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`additional patentability grounds or issues. Apple made changes to Google’s IPR
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`petition only to reflect that the instant Petition is filed by Apple, not Google, and
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`U.S. Patent No. 8,213,970
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`that Apple seeks to join Google’s existing instituted proceeding. See Ex. 1020
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`Motion for Joinder
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`(redline comparison). Apple is also retaining the same expert as Google, Mr.
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`David H. Williams, who reviewed and signed a copy of his previous declaration
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`modified only to reflect that Apple, not Google, is the petitioner. See Exhibit 1021
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`(redline comparison).
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`D.
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`Joinder will not complicate the instituted IPR’s briefing or
`discovery
`The instituted and joined IPRs should not require any additional briefing or
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`discovery beyond what is already occurring in the instituted Google IPR—nor
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`should the Board permit any. Apple’s Petition presents no new substantive issues
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`relative to the Google IPR and does not broaden the scope of the Google’s
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`patentability arguments, art, or evidence in any way.
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`Further, Apple will remain in the understudy role for efficiency’s sake.
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`Apple and Google have agreed that Google’s counsel will act as the lead counsel
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`as long as Google remains in the proceeding. Google’s counsel will submit all
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`briefs, and take and defend all depositions. Google’s counsel will take the lead for
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`petitioners on any conference calls and will argue the case before the Board. So
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`long as Google remains in the proceeding, Apple’s counsel will be present only to
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`observe and to answer any questions pertaining specifically to Apple as the joining
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`party, should any such questions arise.
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`U.S. Patent No. 8,213,970
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`Motion for Joinder
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`E.
`Joinder will not impact the instituted IPR’s schedule
`Section 316(a)(11) provides that IPR proceedings should be completed and
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`the Board’s final decision issued within one year of institution of the review. See
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`also 37 C.F.R. § 42.100(c).2
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`But because Apple fully adopted Google’s patentability arguments, art, and
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`evidence, and because Apple will remain in the understudy role so long as Google
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`remains in the proceeding, the current schedule in the Google IPR may remain
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`unchanged in all respects.
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`F. Without joinder, Apple and the public may be prejudiced.
`Apple may be prejudiced if it is not permitted to join in the Google IPR.
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`AGIS has asserted the ’970 patent against Apple in pending litigation. See
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`generally AGIS Software Development LLC v. Apple Inc., No. 2:17-cv-00516-JRG
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`(E.D. Tex.). Apple should be permitted to join the pending IPR to participate in
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`proceedings affecting a patent asserted against it, and thereby allowed to continue
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`the proceedings should Google and AGIS settle under 37 C.F.R. § 42.74 before a
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`final written decision is issued. See Lowes Cos. Inc. v. Nichia Corp., IPR2017-
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`2 Petitioner notes that 35 U.S.C. § 316(a)(11) and associated rule 37 C.F.R. §
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`42.100(c) also grant the Board flexibility to extend the one-year period by up to six
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`months in the case of joinder, if needed.
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`U.S. Patent No. 8,213,970
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`02011, Paper 13, at 19 (March 12, 2018) (“[d]enial of the Petition in part would
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`Motion for Joinder
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`prejudice the Petitioner in this proceeding should the Vizio Petitions be resolved
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`by settlement”).
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`In addition, permitting Apple to join these proceedings helps ensure that the
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`patentability of the challenged claims will ultimately be decided by the Board,
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`efficiently protecting the public and providing the patent owner with predictable
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`and reliable expectations regarding its patent rights.
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`G.
`Joinder will not prejudice AGIS or Google.
`Permitting joinder will not prejudice AGIS or Google. Google does not
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`oppose joinder, and the Apple Petition does not raise any new issues. From
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`AGIS’s perspective, the proceeding will be practically identical after joinder
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`because Apple raises no new patentability issues or evidence, and will remain in
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`the understudy role so long as Google remains in the proceeding.
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`As a result, the parties will not need to file any additional briefing. Indeed,
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`the Board often expedites the preliminary briefing schedule for the joining petition
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`in similar situations, and should do so here, too. E.g., Valve Corporation v. Elect.
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`Scripting Prods., IPR2019-00074, Paper 5 (Oct. 30, 2018) (Iancu, Fink,
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`Weinschenk); Cree v. Document Security Systems, Inc., IPR2018-01205, Paper 9
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`(Aug. 20, 2018).
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`U.S. Patent No. 8,213,970
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`Motion for Joinder
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`The fact that Apple has previously challenged the ’970 patent also does not
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`prejudice AGIS. The Board has noted that where, as here, a petitioner proposes
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`identical grounds to an already instituted IPR and agrees to proceed in a limited
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`“understudy” role, joinder “obviates any concerns of serial harassment,” even
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`where the joined petitioner has previously challenged the patent at issue. See, e.g.,
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`Celltrion, Inc. v. Genentech, Inc., IPR2018-01019, Paper No. 11, at 10 (Oct. 30,
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`2018) (granting motion for joinder despite prior denied petition); Apple Inc. v.
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`Uniloc 2017 LLC, IPR2018-00579, Paper No. 12, at 11 (Aug. 21, 2018) (noting
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`that petitioner’s commitment to understudy role in motion for joinder “effectively
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`neutraliz[es]” the General Plastic factors for discretionary denial of institution.)
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`This is especially true here, as the prior art relied on in the Petition and the Google
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`IPR is “wholly different” then the art in Apple’s earlier petition. See Kingston
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`Technology Company, Inc. v. Spex Technologies, Inc., IPR2018-01003, Paper No.
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`12, at 5 (Oct. 9, 2018) (noting that joinder does not create prejudice due to
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`incremental petitioning when new art is presented); Apple Inc. v. Uniloc 2017 LLC,
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`Paper No. 12, at 11 (granting joinder in part because “this is not a case in which a
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`petitioner has used prior preliminary responses or decisions of the Board to tailor
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`its substantive arguments”).
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`U.S. Patent No. 8,213,970
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`IV. CONCLUSION
`For the forgoing reasons, Apple respectfully asks the Board to institute the
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`Motion for Joinder
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`instant inter partes review and join it to IPR2018-01079.
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`Dated: December 7, 2018
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`Respectfully submitted,
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`By: / Matthew J. Moore /
`
`Matthew J. Moore (Reg. No. 42,012)
`matthew.moore@lw.com
`Robert Steinberg (Reg. No. 33,144)
`bob.steinberg@lw.com
`Jonathan M. Strang (Reg. No. 61,724)
`jonathan.strang@lw.com
`David A. Zucker (Reg. No. 74,095)
`david.zucker@lw.com
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, DC 20004-1304
`202-637-2200
`
`Lisa K. Nguyen (Reg. No. 58,018)
`lisa.nguyen@lw.com
`Latham & Watkins LLP
`140 Scott Drive
`Menlo Park, CA 94025
`650-470-4848
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`Counsel for Petitioner
`Apple Inc.
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`U.S. Patent No. 8,213,970
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`CERTIFICATE OF SERVICE
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`
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`Motion for Joinder
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`The undersigned certifies that a complete copy of Motion For Joinder
`Under 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, and 42.122(b) were served on
`the official correspondence address for the patent shown in PAIR and a courtesy
`copy to AGIS Software Development LLC’s current litigation counsel:
`
`Mark Bowen
`Dale Di Maggio
`Barry Haley
`David Lhota
`MALIN HALEY DIMAGGIO &
`BOWEN, P.A.
`Spectrum Office Building
`4901 NW 17th Way, Suite 308
`Fort Lauderdale, FL 33309
`
`
`Alfred R. Fabricant
`Peter Lambrianakos
`Vincent J. Rubio, III
`Alessandra C. Messing
`John A. Rubino
`BROWN RUDNICK LLP
`7 Times Square
`New York, NY 10036
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`
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`via FEDERAL EXPRESS next business day delivery, on December 7, 2018.
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`By: / Matthew J. Moore /
`
`Matthew J. Moore (Reg. No. 42,012)
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, DC 20004-1304
`202-637-2200
`matthew.moore@lw.com
`
`Counsel for Petitioner
`Apple Inc.
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