From:
`To:
`Subject:
`Date:
`Attachments:
`
`Kattula, Amy
`Kattula, Amy
`FW: IPR2019-01612 // USPN 7,589,642 // CARES Act Extension of Time Request (Joinder)
`Tuesday, May 5, 2020 12:37:53 PM
`image001.png
`
`
`From: Pleune, Ben <Ben.Pleune@alston.com>
`Sent: Monday, May 4, 2020 10:54 AM
`To: Trials <Trials@USPTO.GOV>; Jon Wright <JWRIGHT@sternekessler.com>
`Cc: Lestin Kenton <LKENTON@sternekessler.com>; Daniel Block <DBLOCK@sternekessler.com>;
`Timothy L. Tang <TTang@sternekessler.com>; Joel Greenberg <jgreenberg@sternekessler.com>;
`PTAB Account <PTAB@sternekessler.com>; Koppelman, Ryan <Ryan.Koppelman@alston.com>;
`Davison, Tom <Tom.Davison@alston.com>; Abe, James <James.Abe@alston.com>; Bean, Caleb
`<Caleb.Bean@alston.com>; Neilson, Derek <Derek.Neilson@alston.com>; Tsui, Nick
`<Nick.Tsui@alston.com>
`Subject: RE: IPR2019-01612 // USPN 7,589,642 // CARES Act Extension of Time Request (Joinder)
`
`Dear Board,
`
`Having considered the issues in more depth, and pursuant to the Board’s email on May 1, Patent
`Owner opposes Petitioner’s request for extension of time to move for joinder under 37 CFR §
`42.122(b). While Patent Owner is sympathetic to the difficulties caused by COVID-19, Federal Circuit
`law remains that the IPR joinder provision 35 U.S.C. § 315(c) does not permit a petitioner to join its
`own previously instituted IPR and does not permit new claims or grounds to be added to an
`instituted IPR. Facebook, Inc. v. Windy City Innovations, LLC, 953 F.3d 1313, 1322 (Fed. Cir., Mar. 18,
`2020). Petitioner is incorrect that the Supreme Court’s decision in Thryv, Inc. v. Click-to-Call
`Technologies, LP “constructively abrogates the Federal Circuit’s decision in Facebook, Inc. v. Windy
`City Innovations, LLC.” Furthermore, Patent Owner does not believe that the criteria for Section I.(1)
`(b) are met or that Petitioner’s request satisfies Section I.(3) of the CARES Act at least because
`Petitioner has not identified any situation that prevented or interfered with its ability to file an IPR
`that included all of the claims of the ’642 patent or to file a timely motion for joinder.
`
`In Thryv, Inc. v. Click-to-Call Technologies, LP, the Supreme Court held that “[t]o understand how far
`beyond §314(a) the bar on judicial review extends, we look to the statute and Cuozzo; for the
`reasons stated above, they establish that §314(d) bars challenges resting on §315(b).” 2020 U.S.
`LEXIS 2406, at *19-20 (2020). Thus, the Supreme Court’s opinion in Thryv was limited to denials of
`institution and the time bar under §315(b). This does not extend to, nor does it have any relation to,
`the rules for joinder to an already instituted IPR under §315(c), which was the subject of the Federal
`Circuit’s opinion in Facebook, Inc. v. Windy City Innovations, LLC. 953 F.3d at 1322 (“The clear and
`unambiguous text of § 315(c) does not authorize same-party joinder, and does not authorize the
`joinder of new issues.”). Thus, there is simply no point to an extension of time to file a request that
`is expressly prohibited by controlling Federal Circuit law.
`
`Nevertheless, even if Thryv did abrogate the Federal Circuit’s controlling law, Patent Owner still does
`not agree that an extension of time is warranted. Petitioner has not provided any specific
`
`

`

`explanation as to why COVID-19 prevented it from performing its work or who was “personally
`affected by the COVID-19 outbreak,” such that timely filing was not possible. CARES Act I.(1).(b).
`Rather, it appears that the real reason for Petitioner’s request is not related to COVID-19, but rather
`is directly responsive to litigation pending before the ITC. As Petitioner states in its email, “On April
`16, Patent Owner filed an ITC complaint” and since then Petitioner “has not yet completed its
`petition or completed gathering supporting evidence it needs to support new grounds covering the 6
`claims asserted in the ITC, but not currently challenged in the pending IPR2019-01612 on the ‘642
`patent.” This is not an adequate reason for extension of time. A quick review of the facts and
`timeline demonstrates that Petitioner had every opportunity to challenge any claims of the ’642
`patent that it desired, and indeed Petitioner did not rely on the District Court infringement
`allegations but performed its own analysis of the claims and deliberately chose to challenge only a
`subset of those claims.
`
`
`On September 18, 2018, Patent Owner served a District Court complaint for patent
`infringement on Petitioner, including the 642 patent.
`
`On December 24, 2018, Patent Owner served infringement contentions in the District Court
`litigation, asserting, in relevant part, claims 1-6, 19, and 22-25 of the ’642 patent.
`
`
`
`
`
`
`
`
`
`On March 14, 2019, the District Court granted Petitioner’s request that Patent Owner select a
`subset its list of asserted claims. However, the Court specifically stated that the selection was
`without prejudice (No. 8:18-cv-0158, Dkt. No. 64 at 7 (“UEI may ask the Court for leave to
`reassert unselected claims”); 3 (“UEI will have the opportunity to add additional claims upon
`showing that they present unique issues”)).
`
`On May 23, 2019, Patent Owner selected a subset the asserted claims of the ’642 patent to
`claims 3, 6, 23, and 25 (No. 8:18-cv-0158, Dkt. No. 84 at 1).
`
`On September 18, 2019, Petitioner filed a petition for this inter partes review, challenging
`claims 1-4, 6, 8-9, and 22-25. Petitioner did not limit the challenged claims to those asserted
`in the District Court or to those left after claim selection. Petitioner deliberately selected a
`subset of claims that included those never asserted in the District Court (claims 8-9) and some
`that were already dropped in litigation (claims 1-2, 4-5, 22-24).
`
`On April 1, 2020, the Board instituted IPR of claims 1-4, 6, 8-9, and 22-25.
`
`On April 16, 2020, Patent Owner filed an ITC complaint against Petitioner, asserting claims 1-
`7, 12, 14, 19-20 and 22-25 of the ’642 patent.
`
`On April 30, 2020 (1 day before the deadline), Petitioner emailed the Board (and Patent
`Owner for the first time) requesting a 30 day extension to address claims asserted in the ITC
`case but not challenged in the IPR.
`
`
`As seen from the timeline above and facts therein, Petitioner had every opportunity to challenge any
`claim of the ‘642 patent and indeed took the full year after service to perform its own independent
`
`

`

`analysis and ultimately selected claims regardless of whether they were asserted in litigation. Now,
`in light of pending ITC litigation, Petitioner seeks a “do over” on its claim selection and appears to
`use COVID-19 as a vehicle to facilitate its litigation strategy. This is not a sufficient reason for an
`extension to file a motion that will significantly derail the current IPR. Petitioner admits that it “has
`not yet completed its petition or completed gathering supporting evidence it needs to support new
`grounds.” Thus, it is clear that new grounds and new issues will be introduced, briefings will be
`significantly more complicated, and maintaining the existing schedule on the instituted IPR will be
`impossible. Patent Owner will be significantly prejudiced if it has to operate on an accelerated
`schedule, under the same COVID-19 conditions as Petitioner, but for no reason other than Petitioner
`waited over one year and seven months to challenge additional claims in the patent.
`
`Alternatively, Petitioner argues that the abrogation of Windy City also warrants an extension
`request. First, as explained earlier, Thryv does not abrogate Windy City. Second, any such
`abrogation does not fall under the provisions of the CARES Act. And third, Petitioner cites to no
`authority that changes in the law warrant an extension of IPR deadlines.
`
`For at least the reasons detailed above, Patent Owner opposes Petitioner request to file a motion for
`the extension of time.
`
`Sincerely,
`Ben Pleune
`
`S. Benjamin Pleune
`Alston & Bird
`704.444.1098
`ben.pleune@alston.com
`
`
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Friday, May 1, 2020 11:01 AM
`To: Pleune, Ben <Ben.Pleune@alston.com>; Jon Wright <JWRIGHT@sternekessler.com>; Trials
`<Trials@USPTO.GOV>
`Cc: Lestin Kenton <LKENTON@sternekessler.com>; Daniel Block <DBLOCK@sternekessler.com>;
`Timothy L. Tang <TTang@sternekessler.com>; Joel Greenberg <jgreenberg@sternekessler.com>;
`PTAB Account <PTAB@sternekessler.com>; Koppelman, Ryan <Ryan.Koppelman@alston.com>;
`Davison, Tom <Tom.Davison@alston.com>; Abe, James <James.Abe@alston.com>; Bean, Caleb
`<Caleb.Bean@alston.com>; Neilson, Derek <Derek.Neilson@alston.com>; Tsui, Nick
`<Nick.Tsui@alston.com>
`Subject: RE: IPR2019-01612 // USPN 7,589,642 // CARES Act Extension of Time Request (Joinder)
`
`EXTERNAL SENDER – Proceed with caution
`
`
`
`Counsel,
`
`
`

`

`The current deadline under 37 C.F.R. § 42.122(b) is tolled until May 5 so that Patent Owner may provide
`its position on Petitioner’s request for an extension under the CARES Act. Patent Owner should provide
`its position by email to the Board no later than May 4. We note that the Office’s Notice provides for
`“Situations Not Covered Above” in Section I(3) of the Notice, which may apply if the criteria for Section
`I(1)(b) are not met.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571)272-7822
`
`
`
`From: Pleune, Ben <Ben.Pleune@alston.com>
`Sent: Thursday, April 30, 2020 4:29 PM
`To: Jon Wright <JWRIGHT@sternekessler.com>; Trials <Trials@USPTO.GOV>
`Cc: Lestin Kenton <LKENTON@sternekessler.com>; Daniel Block <DBLOCK@sternekessler.com>;
`Timothy L. Tang <TTang@sternekessler.com>; Joel Greenberg <jgreenberg@sternekessler.com>;
`PTAB Account <PTAB@sternekessler.com>; Koppelman, Ryan <Ryan.Koppelman@alston.com>;
`Davison, Tom <Tom.Davison@alston.com>; Abe, James <James.Abe@alston.com>; Bean, Caleb
`<Caleb.Bean@alston.com>; Neilson, Derek <Derek.Neilson@alston.com>; Tsui, Nick
`<Nick.Tsui@alston.com>
`Subject: RE: IPR2019-01612 // USPN 7,589,642 // CARES Act Extension of Time Request (Joinder)
`
`Dear Board:
`
`As Petitioner indicates in its email to the Board, Patent Owner was not previously made aware of this
`request and therefore has not been afforded an opportunity to consider these issues and provide its
`position. Based on a very preliminary review, it does not appear that Petitioner’s request for a 30-
`day extension to file a motion for joinder is contemplated by provision 1(b) of the CARE Act Notice.
` But Patent Owner is further considering all of the issues raised in Petitioner’s correspondence and
`intends to provide a complete response, including its position on the request for an extension.
`
`Sincerely,
`Ben Pleune
`
`S. Benjamin Pleune
`Alston & Bird
`704.444.1098
`ben.pleune@alston.com
`
`
`
`From: Jon Wright <JWRIGHT@sternekessler.com>
`Sent: Thursday, April 30, 2020 3:38 PM
`
`

`

`To: trials@uspto.gov
`Cc: Jon Wright <JWRIGHT@sternekessler.com>; Lestin Kenton <LKENTON@sternekessler.com>;
`Daniel Block <DBLOCK@sternekessler.com>; Timothy L. Tang <TTang@sternekessler.com>; Joel
`Greenberg <jgreenberg@sternekessler.com>; PTAB Account <PTAB@sternekessler.com>; Pleune,
`Ben <Ben.Pleune@alston.com>; Koppelman, Ryan <Ryan.Koppelman@alston.com>; Davison, Tom
`<Tom.Davison@alston.com>; Abe, James <James.Abe@alston.com>; Bean, Caleb
`<Caleb.Bean@alston.com>; Neilson, Derek <Derek.Neilson@alston.com>; Tsui, Nick
`<Nick.Tsui@alston.com>
`Subject: RE: IPR2019-01612 // USPN 7,589,642 // CARES Act Extension of Time Request (Joinder)
`
`EXTERNAL SENDER – Proceed with caution
`
`
`
`RE: Extension of time under CARES Act to move for joinder under 37 CFR Sec. 42.122(b) in IPR2019-
`01612 involving USPN 7,589,642 to Mui et al.
`
`Dear Board:
`
`Petitioner seeks an extension of 30-days in which to file a motion for joinder in IPR2019-01612
`under 37 CFR Sec. 42.122(b). The extension is sought under the USPTO’s Notice of Waiver of Patent-
`Related Timing Deadlines under the CARES Act (the CARE Act Notice), Provision (1)(b) or “PTAB
`Situations Not Covered Above,” and for other reasons as set forth below. The facts below constitute
`good cause for the requested extension:
`
`1. On April 1, 2020, the Board instituted trial in IPR2019-01612. Thus, under 37 C.F.R. §
`42.122(b), any request for joinder must be filed as a motion no later than one month after the
`institution date, i.e., May 1, 2020,
`2. On April 16, Patent Owner filed an ITC complaint under 19 U.S.C. Sec. 1337 against Petitioner
`asserting (among others) 4 claims not previously asserted in the parallel district court
`proceeding, plus 2 claims that were originally asserted but then dropped by Patent Owner
`when it reduced the number of asserted claims. The pending IPR on the ‘642 patent does not
`challenge these 6 claims, two of which are independent claims. Petitioner is now past the
`one-year statutory bar set forth in Sec. 315(b).
`3. On April 20, in Thryv, Inc. v. Click-to-Call Technologies, LP the Supreme Court held that the
`Federal Circuit lacks appellate jurisdiction to review issues that are “closely tied to the
`application and interpretation of statutes related to” the institution decision. In Thryv, the
`issue was the one-year time bar under Sec. 315(b). The Supreme Court’s decision in Thryv
`thus constructively abrogates the Federal Circuit’s decision in Facebook, Inc. v. Windy City
`Innovations, LLC., where the Federal Circuit vacated the portion of the Board’s precedential
`decision in Proppant Express allowing a party to join itself in an IPR proceeding outside of the
`one-year time-bar of Sec. 315(b). Since the Federal Circuit was not permitted to review the
`issue it decided in Windy City, the PTAB is not bound to follow Windy City, and the Board’s
`precedential decision in Proppant Express should continue to control whether joinder is
`available to petitioners outside the one-year bar. These facts constitute a recent and material
`change in the law related to joinder.
`
`

`

`4. In view of 2 and 3 above, Petitioner intends to move for joinder, but it has not yet completed
`its petition or completed gathering supporting evidence it needs to support new grounds
`covering the 6 claims asserted in the ITC, but not currently challenged in the pending
`IPR2019-01612 on the ‘642 patent. This process has been uniquely challenging in light of
`short time since the change in the law, and in view of the conditions created by the COVID-19
`pandemic, which together constitute good cause for the limited extension of time requested.
`Petitioner also affirms that:
`• The due date for Petitioner to file a request for joinder is currently May 1, 2020, which falls
`between March 27, 2020 and June 21, 2020;
`• Said due date of May 1, 2020 may be delayed with a 30-day extension of time due to the
`COVID-19 outbreak as defined in the CARES Act Notice;
`• Petitioner has been personally affected by the COVID-19 outbreak as a result of office
`closures, inaccessibility of files or other materials, or similar circumstances, such that the outbreak is
`materially interfering with timely filing and payment; and
` • Accordingly, Petitioner is unable to meet the aforesaid patent-related timing deadline of
`May 1, 2020 due to both the recent change in law and the COVID-19 outbreak, and hereby requests
`a 30-day extension of time, to and including May 31, 2020, to file the request for joinder.
`
`Please acknowledge receipt and confirm the allowance of a 30-day extension of time, until and
`including May 31, 2020, for filing a request for joinder. By copy of this email request, counsel for
`Patent Owner have been notified of this Request.
`
`Alternatively, Petitioner seeks authorization to formally file a motion for the relief requested above.
`If necessary, Petitioner is available for a conference call at the Board’s convenience.
`
`Thank you in advance for your timely consideration and assistance.
`
` -
`
` Jon Wright
`Counsel for Petitioner Roku, Inc.
`
`
`
`Jon Wright
`Director
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`Email: jwright@sternekessler.com
`Direct: 202.772.8651
`
`Administrative Assistant: Jeane-Yve Daniel
`Direct: 202.772.8642 Main: 202.371.2600
`
`
`
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