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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC,
`Petitioner,
`
`v.
`
`INVT SPE LLC,
`Patent Owner.
`
`Patent No. 7,848,439 B2
`Issued: December 7, 2010
`PCT Filed: November 18, 2005
`§371 Date: May 17, 2007
`Inventors: Xiaoming She, Jifeng Li
`Title: COMMUNICATION APPARATUS, COMMUNICATION
`SYSTEM, AND COMMUNICATION METHOD
`
`Inter Partes Review No. IPR2019-00958
`
`MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`TO RELATED INTER PARTES REVIEW IPR2018-01555
`
`
`
`
`TABLE OF CONTENTS
`
`I. STATEMENT OF THE PRECISE RELIEF REQUESTED ................................. 1
`
`II. STATEMENT OF MATERIAL FACTS ................................................................. 1
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ............................ 2
`
`A. Legal Standard ....................................................................................................... 2
`
`B. Petitioner’s Motion for Joinder is Timely ............................................................ 3
`
`C. Each Factor Weighs in Favor of Joinder .............................................................. 3
`
`1. Joinder is Appropriate with the HTC IPR ............................................................ 4
`
`2. Petitioner Proposes No New Grounds of Unpatentability ..................................... 4
`
`3. Joinder Will Not Unduly Burden or Negatively Impact the HTC IPR Trial
`
`Schedule ...................................................................................................................... 5
`
`4. Procedures to Simplify Briefing and Discovery .................................................... 6
`
`IV.
`
`INAPPLICABILITY OF GENERAL PLASTICS ............................................. 7
`
`V. CONCLUSION .................................................................................................... 11
`
`
`
`
`
`
`
`ii
`
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Apple Inc. (“Petitioner”) respectfully submits this Motion for Joinder, together
`
`with a Petition for Inter Partes Review of U.S. Patent No. 7,848,439 (“the Apple
`
`Petition”) filed contemporaneously herewith. Pursuant to 35 U.S.C. § 315(c) and 37
`
`C.F.R. § 42.122(b), Petitioner requests institution of an inter partes review and joinder
`
`with the inter partes review in HTC Corporation and HTC America, Inc. v. INVT SPE
`
`LLC, IPR2018-01555 (“the HTC IPR”), which the Patent Trial and Appeal Board (the
`
`“Board”) instituted on March 7, 2019. Petitioner’s request for joinder is timely under
`
`37 C.F.R. §§ 42.22 and 42.122(b) as it is submitted no later than one month after the
`
`March 7, 2019 institution date of the HTC IPR. The Apple Petition is also narrowly
`
`tailored to the same claims, prior art, and grounds for unpatentability that are the subject
`
`of the HTC IPR. In addition, Petitioner is willing to streamline discovery and briefing.
`
`Petitioner submits that joinder is appropriate because it will not unduly burden or
`
`prejudice the parties to the HTC IPR while efficiently resolving the question of the ’439
`
`Patent’s validity in a single proceeding.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`1.
`INVT SPE LLC ( “INVT” or “Patent Owner”) filed civil actions against
`
`Apple Inc., Case No. 2:17-cv-03738, in the U.S. District Court for the District of New
`
`Jersey, on May 25, 2017, HTC Corporation et al., Case No. 2:17-cv-03740, in the U.S.
`
`District Court for the District of New Jersey on May 25, 2017 and ZTE Corporation et
`
`
`
`1
`
`
`
`al., Case No. 2:17-cv-06522, in the U.S. District Court for the District of New Jersey
`
`on August 29, 2017.
`
`2.
`
`On August 22, 2018, HTC filed a petition for inter partes review
`
`(IPR2018-01555) requesting cancellation of claims 1-7 of the ʼ439 Patent.
`
`3.
`
`On March 7, 2019, the Board instituted HTC’s petition for inter partes
`
`review on all proposed grounds, finding that a reasonable likelihood existed that
`
`HTC’s petition for inter partes review would prevail in showing unpatentability of
`
`claims 1-7 of the ʼ439 Patent. See IPR2018-01555, Decision Instituting IPR Review,
`
`Paper No. 8.
`
`4.
`
`On August 21, 2018, Apple filed a petition for inter partes review
`
`(IPR2018-01477) requesting cancellation of claims 1-11 of the ’439 Patent.
`
`5.
`
`On March 7, 2019, the Board denied institution of Apple’s petition for
`
`inter partes review on all proposed ground. See IPR2018-01477, Decision Denying
`
`Institution, Paper No. 11.
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`A.
`Legal Standard
`The Board has the authority under 35 U.S.C. § 315(c) to join a properly filed inter
`
`partes review petition to an instituted inter partes review proceeding. See 35 U.S.C.
`
`§ 315(c). A motion for joinder must be filed within one month of the Board instituting
`
`an original inter partes review. 37 C.F.R. § 42.122(b). In deciding whether to exercise
`
`its discretion and permit joinder, the Board considers factors, including: (1) the reasons
`
`
`
`2
`
`
`
`why joinder is appropriate; (2) whether the new petition presents any new grounds of
`
`unpatentability; (3) what impact, if any, joinder would have on the trial schedule for the
`
`existing review; and (4) how briefing and discovery may be simplified. See Kyocera
`
`Corporation v. Softview LLC, IPR2013- 00004, Paper 15 at 4 (April 24, 2013).
`
`B.
`Petitioner’s Motion for Joinder is Timely
`This Motion for Joinder is timely because it is filed within one month of the
`
`March 7, 2019 institution decision of the HTC IPR. See 37 C.F.R. § 42.122(b).
`
`Further, the one-year bar set forth in 37 C.F.R. § 42.101(b) does not apply to the
`
`Apple Petition because this Motion for Joinder is filed concurrently with the Apple
`
`Petition. 37 C.F.R. § 42.122(b).
`
`C.
`Each Factor Weighs in Favor of Joinder
`Each of the four factors considered by the Board weighs in favor of joinder here.
`
`Specifically, the Apple Petition does not present any new grounds of unpatentability;
`
`rather it is substantively identical to the HTC Petition. Further, joinder will have
`
`minimal, if any, impact on the trial schedule, as all issues are substantively identical
`
`and Petitioner will accept an “understudy” role. See IPR2015- 01353, Decision
`
`Instituting IPR Review, Motion for Joinder, paper 11 at 6; (granting IPR where
`
`petitioners requested an “understudy” role); see also IPR2015-01353, Motion for
`
`Joinder, paper 4 at 5-7. Lastly, the briefing and discovery will be simplified by
`
`resolving all issues in a single proceeding.
`
`
`
`3
`
`
`
`Accordingly, joinder is appropriate here. See IPR2015-01353, Decision
`
`Instituting IPR Review, Motion for Joinder, paper 11 at 5-6 (granting institution of IPR
`
`and motion for joinder where petitioners relied “on the same prior art, same arguments,
`
`and same evidence, including the same expert and a substantively identical
`
`declaration.”); see also IPR2015-01353, Motion for Joinder, paper 4 at 4- 5.
`
`1.
`Joinder is Appropriate with the HTC IPR
`Joinder with the HTC IPR is appropriate because the Apple Petition involves the
`
`same patent, challenges the same claims, relies on the same expert declaration, and is
`
`based on the same grounds and combinations of prior art submitted in the HTC Petition.
`
`Id. The Apple Petition is substantively identical to the HTC Petition, containing only
`
`minor differences related to formalities of a different party filing the petition as well as
`
`an explanation that General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha does
`
`not apply (IPR2017-01357, slip op. at 16 (PTAB Sept. 6, 2017) (Paper 19) (precedential
`
`as to § II.B.4.i)).
`
`Other than these mere differences related to formalities, there are no changes to
`
`the facts, citations, evidence, or arguments presented in the HTC Petition. Because
`
`these proceedings are substantively identical, good cause exists for joining this
`
`proceeding with the HTC IPR so that the Board can efficiently resolve all grounds in
`
`both the Apple and HTC Petitions in a single proceeding. Id.
`
`2.
`Petitioner Proposes No New Grounds of Unpatentability
`The Apple Petition does not present any new grounds of unpatentability. The
`
`
`
`4
`
`
`
`Apple Petition is substantively identical to the HTC Petition. The Apple Petition
`
`presents the unpatentability of the same claims of the same patent in the same way as
`
`the HTC Petition.
`
`3.
`
`Joinder Will Not Unduly Burden or Negatively Impact the HTC
`IPR Trial Schedule
`Because the Apple Petition is substantively identical to the HTC Petition, with
`
`the same grounds rejecting the same claims as instituted by the Board, there are no
`
`new issues for Patent Owner to address. Due to the same issues being presented in the
`
`HTC Petition, Patent Owner will not be required to present any additional responses
`
`or arguments. See IPR2015-01353, Decision Instituting IPR, Motion for Joinder, paper
`
`11 at 6 (granting IPR and motion for joinder where “joinder should not necessitate any
`
`additional briefing or discovery from Patent Owner beyond that already required in
`
`[the original IPR].”); see also IPR2015- 01353, Motion for Joinder, paper 4 at 5-7.
`
`Further, the Patent Owner Preliminary Response already filed in the HTC IPR
`
`addresses any and all issues in the Apple Petition, since the issues are substantively
`
`identical to the issues of the HTC Petition. See IPR2018-01555, Patent Owner’s
`
`Preliminary Response, paper 7.
`
`The Patent Owner Response will also not be negatively impacted because the
`
`issues presented in the HTC Petition are identical to the issues presented in the Apple
`
`Petition. Patent Owner will not be required to provide any additional analysis or
`
`arguments beyond what it will already provide in responding to the HTC Petition.
`
`
`
`5
`
`
`
`Id. Also, because the Apple Petition relies on the same expert and a substantively
`
`identical declaration, only a single deposition is needed for the proposed joined
`
`proceeding.
`
`Joinder of this proceeding with the HTC IPR does not unduly burden or
`
`negatively impact the trial schedule in any meaningful way. Further, even if a small
`
`adjustment of the trial schedule was necessary, this is already provided for in the
`
`rules and is a routine undertaking by parties in IPR proceedings. See 37 C.F.R.
`
`§ 42.100(c). Thus, a slight adjustment in the trial schedule, should one be needed, is
`
`not enough of a reason to deny joining the present Apple Petition with the HTC
`
`IPR.
`
`4.
`Procedures to Simplify Briefing and Discovery
`The HTC Petition and Apple Petition present substantively identical grounds
`
`of rejection, including the same art combinations against the same claims.
`
`Additionally, Petitioner explicitly agrees to take an “understudy” role, as described
`
`by the Board:
`
`“(a) all filings by [Petitioner] in the joined proceeding be consolidated
`with [the filings of the petitioner in the HTC IPR], unless a filing solely
`concerns issues that do not involve [the petitioner in the HTC IPR];
`(b) [Petitioner] shall not be permitted to raise any new grounds not
`already instituted by the Board in the [HTC IPR], or introduce any
`argument or discovery not already introduced by [the petitioner in the
`HTC IPR]; (c) [Petitioner] shall be bound by any agreement between
`[Patent Owner] and [the petitioner in the HTC IPR] concerning
`
`
`
`6
`
`
`
`discovery and/or depositions; and (d) [Petitioner] at deposition shall
`not receive any direct, cross-examination or redirect time beyond that
`permitted for [the petitioner in the HTC IPR] alone under either 37
`C.F.R. § 42.53 or any agreement between [Patent Owner] and [the
`petitioner in the HTC IPR].”
`
`See IPR2014-00550, paper 38 at 5 (Apr. 10, 2015) (emphasis in original). Petitioner
`
`Apple will assume the primary role only if HTC ceases to participate in the HTC
`
`IPR. Petitioner Apple has conferred with counsel for Petitioner HTC, and Petitioner
`
`HTC takes no position as to Petitioner Apple joining in IPR2018-01555 in an
`
`“understudy” role.
`
`By Petitioner accepting an “understudy” role, Patent Owner and Petitioner
`
`Apple can comply with the current trial schedule and avoid any duplicative efforts
`
`by the Board or the Patent Owner. These steps will minimize any potential
`
`complications or delay that potentially may result by joinder. See IPR2015-01353,
`
`Decision Instituting IPR, paper 11 at 6-7 (granting IPR and motion for joinder
`
`because “joinder would increase efficiency by eliminating duplicative filings and
`
`discovery, and would reduce costs and burdens on the parties as well as the Board”
`
`where petitioners agreed to an “understudy” role.); see also IPR2015-01353, Motion
`
`for Joinder, paper 4 at 6-7.
`
`IV.
`
`INAPPLICABILITY OF GENERAL PLASTICS
`Petitioner respectfully submits application of the General Plastic analysis is
`
`inapplicable here. In General Plastic, the Board set forth a series of factors that may be
`
`
`
`7
`
`
`
`analyzed for follow-on petitions to help conserve the finite resources of the Board. Here,
`
`both Apple and HTC submitted separate, independent petitions that were only filed one
`
`day apart. Apple’s petition (IPR2018-01477) was denied while HTC’s petition (IPR2018-
`
`01555) was granted. In the current motion, Apple merely seeks to join HTC’s petition and
`
`does not present any new grounds. As such, Apple respectfully submits that General
`
`Plastic does not apply in this circumstance because Apple would be taking an understudy
`
`role and the Board’s finite resources would not be impacted. Moreover, a joinder motion
`
`in these circumstances is not the type of serial petition to which General Plastic applies.
`
`In the event the Board does analyze the General Plastic factors, those factors
`
`heavily weigh in favor of instituting the present IPR. General Plastic Indus. Co., Ltd. v.
`
`Canon Kabushiki Kaisha, IPR2017-01357, slip op. at 16 (PTAB Sept. 6, 2017) (Paper 19)
`
`(precedential as to § II.B.4.i).
`
`The first General Plastic factor is whether the same petitioner previously filed a
`
`petition directed to the same claims of the same patent. While Apple previously did file a
`
`petition challenging claims 1-11 of the ’439 Patent, this factor is irrelevant because Apple
`
`only seeks to join HTC’s petition in an understudy role.
`
`The second factor is whether at the time of filing the first petition the petitioner
`
`knew or should have known of the prior art asserted in the second petition. This factor is
`
`neutral, if not inapplicable, in the General Plastic analysis. Here, HTC’s petition and
`
`Apple’s petition share many pieces of prior art. However, because Apple is merely
`
`
`
`8
`
`
`
`seeking to join in an understudy role, the factor is neutral, at best, in determining whether
`
`to institute.
`
`The third factor is whether at the time of filing of the second petition the petitioner
`
`already received the patent owner’s preliminary response to the first petition or received
`
`the Board decision on whether to institute review in the first petition. This factor weighs
`
`against denial of institution. Although the Board ruled to deny institution in the Apple
`
`IPR, Apple has not provided any substantive analysis that addresses either patent owner’s
`
`Preliminary Response or the Board’s Institute Decision. Indeed, because this is a motion
`
`for Joinder, Apple is submitting a substantively identical petition and has not added to, or
`
`changed, any of the substantive arguments in response to either the Patent Owner’s POPR
`
`or the Board’s Institution Decision. Moreover, because the present Petition is submitting
`
`as a joinder and Apple will serve an understudy role, the petition clearly is not an attempt
`
`to harass the Patent Owner or otherwise engage in serial, tactical filings. Thus, this factor
`
`weighs against denial of joinder/institution.
`
`The fourth factor is the length of time elapsed between the time the petitioner
`
`learned of the prior art asserted in the second petition and filing of the second petition,
`
`and the fifth factor is whether the petitioner provides adequate explanation for the time
`
`elapsed between the filings of multiple petitions directed to the same claims of the same
`
`patent. In the context of a joinder motion where Apple will be taking an understudy role,
`
`these factors are inapplicable. Apple filed its own petition that was denied. HTC’s petition
`
`on the same patent was granted. Apple is moving to join HTC’s petition within the 30-
`
`
`
`9
`
`
`
`day deadline and will only serve in an understudy role with a substantively identical
`
`Petition. Thus, these two factors are inapplicable.
`
`The sixth factor is the finite resources of the Board. This factor also weighs against
`
`denial, especially given the Congressional intent of the IPR process. Petitioner appreciates
`
`the Board is consistently busy. However, HTC’s petition already has been instituted.
`
`Allowing Apple’s joinder motion where it will serve in an understudy role will not impact
`
`the Board’s resources, especially because HTC’s petition already has been instituted.
`
`The seventh factor is the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`
`determination not later than 1 year after the date on which the Director notices institution
`
`of review. This factor weighs in favor of institution, as there is nothing to prevent the
`
`Board from issuing a final determination on HTC’s petition within one year even with a
`
`joinder of Apple and its petition.
`
`An eighth factor identified by the Board in Shenzhen is the extent to which the
`
`petitioner and any prior petitioner(s) were similarly situated defendants or otherwise
`
`realized a similar-in-time hazard regarding the challenged patent. Shenzhen Silver Star
`
`Intelligent Tech. Co., Ltd. v. iRobot Corp., IPR2018-00898, Paper 9 at 7 (PTAB Oct. 1,
`
`2018). This factor also weighs in favor of institution. This is not a situation where
`
`Petitioner’s challenge to the patentability of the ’439 Patent has changed or shifted due to
`
`the prior-filed HTC IPR. This is self-evident because this is a motion for joinder where
`
`Apple is submitting a substantively identical petition to that submitted by HTC.
`
`
`
`10
`
`
`
`Thus, none of the General Plastic factors weigh against institution and joinder in
`
`this situation.
`
`V. CONCLUSION
`Based on the factors discussed above, Petitioner Apple respectfully requests
`
`that the Board grant the Apple Petition for Inter Partes Review of U.S. Patent No.
`
`7,848,439 and then grant joinder with the HTC Corporation and HTC America, Inc.
`
`v. INVT SPE LLC, IPR2018-01555 proceeding.
`
`Dated: April 8, 2019
`
`
`
`Respectfully submitted,
`
`ERISE IP, P.A.
`
` /s/ Adam P. Seitz
`Adam P. Seitz (Reg. No. 52,206)
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`Telephone: (913) 777-5600
`Fax: (913) 777-5601
`Paul R. Hart (Reg. No. 59,646)
`ERISE IP, P.A.
`5600 Greenwood Plaza Blvd.
`Suite 200
`Greenwood Village, CO 80111
`Telephone: (913) 777-5600
`Fax: (913) 777-5601
`Counsel for Petitioner Apple Inc.
`
`
`
`11
`
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that a true and correct copy of the Motion for
`
`Joinder has been served on the Patent Owner via Federal Express or by means at
`
`least as fast and reliable as Federal Express on the below date, at the following
`
`address:
`
`Daylight Law, P.C.
`626 Jefferson Ave., Suite 7
`Redwood City, CA 94063
`
`
`Dated: April 8, 2019
`
`Respectfully submitted,
`
`ERISE IP, P.A.
`
` /s/ Adam P. Seitz
`
`Adam P. Seitz (Reg. No. 52,206)
`Counsel for Petitioner Apple Inc.
`
`
`
`12
`
`
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