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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. 9,445,251
`Issued: September 13, 2016
`Application No.: 14/633,804
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`For: Method to Provide Ad Hoc and Password Protected Digital and Voice
`Networks
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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. 9,445,251
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`Motion for Joinder
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`TABLE OF CONTENTS
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`Page
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED ................................... 1
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`II.
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`BACKGROUND AND RELATED PROCEEDINGS ................................... 2
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`III.
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`STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 3
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`A.
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`Legal Standard ....................................................................................... 3
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`B.
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`C.
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`D.
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`Joinder is appropriate here because the petitions are
`substantively identical ........................................................................... 4
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`Joinder will introduce no new grounds or issues. ................................. 4
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`Joinder will not complicate the Google IPR’s briefing or
`discovery ............................................................................................... 5
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`E.
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`Joinder will not impact the Google IPR’s schedule .............................. 6
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`F. Without joinder, Apple and the public may be prejudiced. .................. 6
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`G.
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`Joinder will not prejudice AGIS or Google. ......................................... 7
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`IV. CONCLUSION ................................................................................................ 8
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`i
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`U.S. Patent No. 9,445,251
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`
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`Motion for Joinder
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`Apple Inc. (“Apple”) submits this Motion for Joinder to IPR2018-01083
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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, 2, 4-6, 8, 10, 12, 22-24,
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`27, 29, 31, 32, and 35 of U.S. Patent No. 9,445,251 (“the ’251 Patent”). Google
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`has indicated that it does not oppose joinder. AGIS opposes joinder.
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`Apple requests institution of IPR and party joinder with the pending IPR
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`titled Google LLC v. AGIS Software Development, LLC, Case No. IPR2018-01083
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`(“the Google IPR”), based on grounds identical to those in that proceeding.
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`Google LLC, Huawei Device USA Inc., Huawei Device Co., Ltd., Huawei Device
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`(Dongguan) Co., Ltd., Huawei Technologies USA Inc., Huawei Technologies Co.,
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`Ltd., and LG Electronics, Inc. initiated the Google IPR proceeding by petitioning
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`the Board on May 15, 2018. Apple timely files the Petition and this motion, as the
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`Google IPR has not received an institution decision. 37 C.F.R. § 42.122(b).
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`Joinder will efficiently resolve the challenges presented in the Petition and
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`the grounds of the Google IPR and will not prejudice the patent owner or the first
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`petitioner, Google. Indeed, the patent owner will be unaffected. The Petition is
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`essentially identical to Google’s IPR petition—Google’s patentability arguments
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`and supporting evidence were copied verbatim and fully adopted to avoid
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`introducing any new issues. Apple’s expert declaration submitted is from the same
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`- 1 -
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`U.S. Patent No. 9,445,251
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`declarant and is also essentially identical to the declaration submitted in the Google
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`Motion for Joinder
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`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
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`The ’251 patent is assigned to AGIS Software Development LLC (“AGIS”
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`or “Patent Owner”). AGIS has asserted the ’251 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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`Development LLC v. LG Electronics, Inc., No. 2:17-cv-00515 (E.D. Tex.); AGIS
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`Software Development LLC v. ZTE Corporation et al., No. 2:17-cv-00517 (E.D.
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`1 Exs. 1029 and 1030 are redlines showing the differences between the Google and
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`Apple petitions and declarations.
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`- 2 -
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`U.S. Patent No. 9,445,251
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`Tex.); AGIS Software Development LLC v. HTC Corporation, No. 2:17-cv-00514
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`Motion for Joinder
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`(E.D. Tex.).
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`In addition to the Google IPR mentioned in the preceding section, the ’251
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`patent was previously challenged by Apple Inc. in IPR2018-00817 (institution
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`denied October 3, 2018). Concurrently with the Google IPR, Google filed other
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`IPRs against the ’251 patent on claims not challenged in this petition (IPR2018-
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`01084), and with separate prior art (IPR2018-01081, -01082, institution denied
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`November 20, 2018).
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
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`A. Legal Standard
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`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); 35 U.S.C. § 315(c). The joinder motion should: (1) set forth the reasons
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`why joinder is appropriate; (2) identify any new grounds of unpatentability
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`asserted in the petition; (3) explain what impact (if any) joinder would have on the
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`trial schedule for the existing review; and (4) address specifically how briefing and
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`discovery may be simplified. Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-
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`00385, Paper 17 at 3-4 (July 29, 2013).
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`- 3 -
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`U.S. Patent No. 9,445,251
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`Motion for Joinder
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`B.
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`Joinder is appropriate here because the petitions are substantively
`identical
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`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.
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`Joinder will introduce no new grounds or issues.
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`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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`that Apple seeks to join Google’s existing proceeding. See Ex. 1029 (redline
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`comparison). Apple is also retaining the same expert as Google, Mr. David H.
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`Williams, who reviewed and signed a copy of his previous declaration modified
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`- 4 -
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`U.S. Patent No. 9,445,251
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`only to reflect that Apple, not Google, is the petitioner. See Exhibit 1030 (redline
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`Motion for Joinder
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`comparison).
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`D.
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`Joinder will not complicate the Google IPR’s briefing or discovery
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`The joined IPRs should not require any additional briefing or discovery
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`beyond what is already occurring in the Google IPR—nor should the Board permit
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`any. Apple’s Petition presents no new substantive issues relative to the Google
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`IPR and does not broaden the scope of the Google’s patentability arguments, art, or
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`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. If the joined IPRs are instituted,
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`Google’s counsel will submit all briefs, and take and defend all depositions.
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`Google’s counsel will take the lead for petitioners on any conference calls and will
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`argue the case before the Board. So long as Google remains in the proceeding,
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`Apple’s counsel will be present only to observe and to answer any questions
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`pertaining specifically to Apple as the joining party, should any such questions
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`arise.
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`- 5 -
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`U.S. Patent No. 9,445,251
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`Motion for Joinder
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`E.
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`Joinder will not impact the Google IPR’s schedule
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`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.
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`Apple may be prejudiced if it is not permitted to join in the Google IPR.
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`AGIS has asserted the ’251 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. 9,445,251
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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.
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`Joinder will not prejudice AGIS or Google.
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`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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`- 7 -
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`U.S. Patent No. 9,445,251
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`Motion for Joinder
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`The fact that Apple has previously challenged the ’251 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 existing 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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`IV. CONCLUSION
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`For the forgoing reasons, Apple respectfully asks the Board to institute the
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`- 8 -
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`U.S. Patent No. 9,445,251
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`instant inter partes review and join it to IPR2018-01083.
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`Motion for Joinder
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`Dated: January 3, 2019
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`Respectfully submitted,
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`By: / Matthew J. Moore /
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`Matthew J. Moore (Reg. No. 42,012)
`Robert Steinberg (Reg. No. 33,144)
`Jonathan M. Strang (Reg. No. 61,724)
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, DC 20004-1304
`202-637-2200
`matthew.moore@lw.com
`bob.steinberg@lw.com
`jonathan.strang@lw.com
`
`Lisa K. Nguyen (Reg. No. 58,018)
`Latham & Watkins LLP
`140 Scott Drive
`Menlo Park, CA 94025
`650-470-4848
`lisa.nguyen@lw.com
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`Counsel for Petitioner
`Apple Inc.
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`U.S. Patent No. 9,445,251
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`Motion for Joinder
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a complete copy of Motion For Joinder
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`Under 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, and 42.122(b) was served on
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`the official correspondence address for the patent shown in PAIR and a courtesy
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`copy to AGIS Software Development LLC’s current litigation counsel:
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` Mark Abate, et al.
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`Goodwin Procter LLP
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`Patent Administrator
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`100 Northern Avenue
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`Boston, MA 02210
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`
`Alfred R. Fabricant
`Peter Lambrianakos
`Vincent J. Rubino, III
`Alessandra C. Messing
`John A. Rubino
`BROWN RUDNICK LLP
`7 Times Square
`New York, NY 10036
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`via FEDERAL EXPRESS next business day delivery, on January 3, 2019
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`By: / Matthew J. Moore /
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`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
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`Counsel for Petitioner
`Apple Inc.
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