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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`SOLAS OLED, LTD.,
`Patent Owner
`_________________
`
`
`Inter Partes Review Case No. IPR2020-01059
`U.S. Patent No. 6,072,450
`
`
`
`
`
`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 IPR2020-00140
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`
`
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`
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`I.
`
`II.
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`
`
`TABLE OF CONTENTS
`
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`STATEMENT OF MATERIAL FACTS
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
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`a.
`
`b.
`
`c.
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`Legal Standard
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`Petitioner’s Motion for Joinder is Timely
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`Each Factor Weighs in Favor of Joinder
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`Joinder is Appropriate with the Samsung IPR
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`3
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`3
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`4
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`4
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`4
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`5
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`5
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`1.
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`2.
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`3.
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`4.
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`Petitioner Proposes No New Grounds of Unpatentability 6
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`Joinder Will Not Unduly Burden or Negatively Impact the
`Samsung IPR Trial Schedule
`6
`
`Procedures to Simplify Briefing and Discovery
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`8
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`9
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`12
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`IV. GENERAL PLASTICS IS INAPPLICABLE
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`V. CONCLUSION
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Apple Inc. (“Petitioner”) respectfully submits this Motion for Joinder,
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`together with a Petition for Inter Partes Review of U.S. Patent No. 6,072,450 (“the
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`Apple Petition”) filed contemporaneously herewith. Pursuant to 35 U.S.C. § 315(c)
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`and 37 C.F.R. § 42.122(b), Petitioner requests institution of an inter partes review
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`and joinder with the inter partes review in Samsung Display Co., Ltd. And Dell Inc.,
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`IPR2020-00140 (“the Samsung IPR”), which the Patent Trial and Appeal Board (the
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`“Board”) instituted on May 8, 2020. Petitioner’s request for joinder is timely under
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`37 C.F.R. §§ 42.22 and 42.122(b) as it is submitted no later than one month after the
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`June 8, 2020 institution date of the Samsung IPR. The Apple Petition is also narrowly
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`tailored to the same claims, prior art, and grounds for unpatentability that are the
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`subject of the Samsung IPR. In addition, Petitioner is willing to streamline discovery
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`and briefing.
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`Petitioner submits that joinder is appropriate because it will not unduly burden
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`or prejudice the parties to the Samsung IPR while efficiently resolving the question
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`of the ‘450 Patent’s validity in a single proceeding.
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`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`On November 7, 2019, Samsung filed a petition for inter partes
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`review (IPR2020-00140) requesting cancellation of claims 1-9, 11-13, and 15-18
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`of the ʼ450 Patent.
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`
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`3
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`
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`2.
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`On May 8, 2020, the Board instituted Samsung’s petition for inter
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`partes review on all proposed grounds, finding that a reasonable likelihood
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`existed that Samsung’s petition for inter partes review would prevail in showing
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`unpatentability of claims 1-9, 11-13, and 15-18 of the ʼ450 Patent. See IPR2020-
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`00140, Decision Instituting IPR Review, Paper No. 9.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`a.
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`Legal Standard
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`The Board has the authority under 35 U.S.C. § 315(c) to join a properly filed
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`inter partes review petition to an instituted inter partes review proceeding. See 35
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`U.S.C. § 315(c). A motion for joinder must be filed within one month of the Board
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`instituting an original inter partes review. 37 C.F.R. § 42.122(b). In deciding
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`whether to exercise its discretion and permit joinder, the Board considers factors,
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`including: (1) the reasons why joinder is appropriate; (2) whether the new petition
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`presents any new grounds of unpatentability; (3) what impact, if any, joinder would
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`have on the trial schedule for the existing review; and (4) how briefing and discovery
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`may be simplified. See Kyocera Corporation v. Softview LLC, IPR2013-00004,
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`Paper 15 at 4 (April 24, 2013).
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`b.
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`Petitioner’s Motion for Joinder is Timely
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`This Motion for Joinder is timely because it is filed within one month of the
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`May 8, 2020 institution decision of the Samsung IPR. See 37 C.F.R. § 42.122(b).
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`
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`4
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`
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`Further, the one-year bar set forth in 37 C.F.R. § 42.101(b) does not apply to the
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`Apple Petition because this Motion for Joinder is filed concurrently with the Apple
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`Petition. 37 C.F.R. § 42.122(b).
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`c.
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`Each Factor Weighs in Favor of Joinder
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`Each of the four factors considered by the Board weighs in favor of joinder
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`here. Specifically, the Apple Petition does not present any new grounds of
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`unpatentability; rather it is substantively identical to the Samsung Petition. Further,
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`joinder will have minimal, if any, impact on the trial schedule, as all issues are
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`substantively identical and Petitioner will accept an “understudy” role. See IPR2015-
`
`01353, Decision Instituting IPR Review, Motion for Joinder, paper 11 at 6; (granting
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`IPR where petitioners requested an “understudy” role); see also IPR2015-01353,
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`Motion for Joinder, paper 4 at 5-7. Lastly, the briefing and discovery will be
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`simplified by resolving all issues in a single proceeding.
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`Accordingly, joinder is appropriate. See IPR2015-01353, Decision Instituting
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`IPR Review, Motion for Joinder, paper 11 at 5-6 (granting institution of IPR and
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`motion for joinder where petitioners relied “on the same prior art, same arguments,
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`and same evidence, including the same expert and a substantively identical
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`declaration.”); see also IPR2015-01353, Motion for Joinder, Paper 4 at 4- 5.
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`Joinder is Appropriate
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`1.
`Joinder with the Samsung IPR is appropriate because the Apple Petition
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`
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`5
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`
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`involves the same patent, challenges the same claims, relies on the same expert
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`declaration, and is based on the same grounds and combinations of prior art
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`submitted in the Samsung Petition. Id. The Apple Petition is substantively identical
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`to the Samsung Petition, containing only minor differences related to formalities of
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`a different party filing the petition. There are no changes to the facts, citations,
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`evidence, or arguments presented in the Samsung Petition. Because these
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`proceedings are substantively identical, good cause exists for joining this proceeding
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`with the Samsung IPR so that the Board can efficiently resolve all grounds in both
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`the Apple and Samsung Petitions in a single proceeding. Id.
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`Petitioner Proposes No New Grounds of Unpatentability
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`2.
`The Apple Petition presents the same grounds of unpatentability as the
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`Samsung Petition.
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`3.
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`Joinder Will Not Unduly Burden or Negatively Impact the
`Samsung IPR Trial Schedule
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`Because the Apple Petition is substantively identical to the Samsung Petition,
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`with the same grounds rejecting the same claims as instituted by the Board, there are
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`no new issues for Patent Owner to address. Due to the same issues being presented
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`in the Samsung Petition, Patent Owner will not be required to present any additional
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`responses or arguments. See IPR2015-01353, Decision Instituting IPR, Motion for
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`Joinder, paper 11 at 6 (granting IPR and motion for joinder where “joinder should
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`
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`6
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`
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`not necessitate any additional briefing or discovery from Patent Owner beyond that
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`already required in [the original IPR].”); see also IPR2015- 01353, Motion for
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`Joinder, paper 4 at 5-7. Further, the Patent Owner Preliminary Response already
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`filed in the Samsung IPR addresses any and all issues in the Apple Petition, since
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`the issues are substantively identical to the issues of the Samsung Petition. See
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`IPR2020-00140, Patent Owner’s Preliminary Response, paper 7.
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`The Patent Owner Response will also not be negatively impacted because the
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`issues presented in the Samsung Petition are identical to the issues presented in the
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`Apple Petition. Patent Owner will not be required to provide any additional analysis
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`or arguments beyond what it will already provide in responding to the Samsung
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`Petition. Id. Also, because the Apple Petition relies on the same expert and an
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`identical declaration, only a single deposition is needed for the proposed joined
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`proceeding.
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`Joinder of this proceeding with the Samsung IPR does not unduly burden or
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`negatively impact the trial schedule in any meaningful way. Further, even if a small
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`adjustment of the trial schedule was necessary, this is already provided for in the rules
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`and is a routine undertaking by parties in IPR proceedings. See 37 C.F.R. § 42.100(c).
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`Thus, a slight adjustment in the trial schedule, should one be needed, is not enough
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`of a reason to deny joining the present Apple Petition with the Samsung IPR.
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`
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`7
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`
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`Procedures to Simplify Briefing and Discovery
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`4.
`The Samsung Petition and Apple Petition present substantively identical
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`grounds of rejection, including the same art combinations against the same claims.
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`Additionally, Petitioner explicitly agrees to take an “understudy” role, as described
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`by the Board:
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`“(a) all filings by [Petitioner] in the joined proceeding be consolidated
`with [the filings of the petitioner in the Samsung IPR], unless a filing
`solely concerns issues that do not involve [the petitioner in the
`Samsung IPR]; (b) [Petitioner] shall not be permitted to raise any new
`grounds not already instituted by the Board in the [Samsung IPR], or
`introduce any argument or discovery not already introduced by [the
`petitioner in the Samsung IPR]; (c) [Petitioner] shall be bound by any
`agreement between [Patent Owner] and [the petitioner in the Samsung
`IPR] concerning 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 Samsung IPR]
`alone under either 37 C.F.R. § 42.53 or any agreement between [Patent
`Owner] and [the petitioner in the Samsung IPR].”
`
`IPR2014-00550, paper 38 at 5 (Apr. 10, 2015) (emphasis in original). Petitioner
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`Apple will assume the primary role only if Samsung ceases to participate in the
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`Samsung IPR.
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`By Petitioner accepting an “understudy” role, Patent Owner and Petitioner
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`Apple can comply with the current trial schedule and avoid any duplicative efforts
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`
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`8
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`
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`by the Board or the Patent Owner. These steps will minimize any potential
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`complications or delay that potentially may result by joinder. See IPR2015-01353,
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`Decision Instituting IPR, paper 11 at 6-7 (granting IPR and motion for joinder
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`because “joinder would increase efficiency by eliminating duplicative filings and
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`discovery, and would reduce costs and burdens on the parties as well as the Board”
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`where petitioners agreed to an “understudy” role.); see also IPR2015-01353, Motion
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`for Joinder, paper 4 at 6-7.
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`IV. GENERAL PLASTICS IS INAPPLICABLE
`
`Petitioner respectfully submits application of the General Plastic analysis is
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`inapplicable here. In General Plastic, the Board set forth a series of factors that may
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`be analyzed for follow-on petitions to help conserve the finite resources of the Board.
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`Here, both Apple and Samsung submitted separate, independent petitions. In the
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`current motion, Apple merely seeks to join Samsung’s petition and does not present
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`any new grounds. As such, Apple respectfully submits that General Plastic does not
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`apply in this circumstance because Apple would be taking an understudy role and
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`the Board’s finite resources would not be impacted. Moreover, a joinder petition in
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`these circumstances is not the type of serial petition to which General Plastic
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`applies, especially as Apple has not previously filed an IPR against the ’450 Patent.
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`The PTAB has previously stated that a joinder petition “effectively neutralizes” a
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`General Plastic analysis. See Apple Inc. v. Uniloc 2017 LLC, IPR2018-00580, Paper
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`
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`9
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`
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`13 at 10 (PTAB Aug. 21, 2018) (instituting a joinder petition where joinder
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`petitioner previously filed a non-instituted IPR, stating joinder petitioner’s joinder
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`motion agreeing to a passive understudy role “effectively neutraliz[es] the General
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`Plastic factors”); see also Celltrion, Inc. v. Genetech, Inc., IPR2019-01019, Paper
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`11 at 10 (PTAB Oct. 30, 2018) (instituting a joinder petition where joinder petition
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`previously filed a non-instituted IPR, stating the joinder motion “effectively obviates
`
`any concerns of serial harassment and unnecessary expenditures of resources”).
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`In the event the Board does analyze the General Plastic factors, those factors
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`heavily weigh in favor of instituting the present IPR. General Plastic Indus. Co.,
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`Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, slip op. at 16 (PTAB Sept. 6,
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`2017) (Paper 19) (precedential as to § II.B.4.i).
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`Regarding factor 1, Apple has not previously filed a petition against the ’450
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`Patent. This factor weighs in favor of institution.
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`The second factor is whether at the time of filing the first petition the petitioner
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`knew or should have known of the prior art asserted in the second petition. This
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`factor is neutral, if not inapplicable, in the General Plastic analysis. Here, Samsung’s
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`petition and Apple’s petition share the same prior art because Apple’s Petition is a
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`“copycat” of Samsung’s petition. Because Apple is merely seeking to join in an
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`understudy role, the factor is neutral, at best, in determining whether to institute.
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`The third factor is whether at the time of filing of the second petition the
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`
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`10
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`
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`petitioner already received the patent owner’s preliminary response to the first
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`petition or received the Board’s decision on whether to institute review in the first
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`petition. Because this is a Motion for Joinder requesting an understudy role, Apple
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`is submitting a substantively identical petition and has not added to, or changed, any
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`of the substantive arguments from the Samsung petition. Moreover, because the
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`present Petition is submitted as a joinder and Apple will serve an understudy role,
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`the Petition is not an attempt to harass the Patent Owner or otherwise engage in
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`serial, tactical filings. Thus, this factor weighs against denial of joinder/institution.
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`The fourth factor is the length of time elapsed between the time the petitioner
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`learned of the prior art asserted in the second petition and filing of the second
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`petition, and the fifth factor is whether the petitioner provides adequate explanation
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`for the time elapsed between the filings of multiple petitions directed to the same
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`claims of the same patent. In the context of a joinder motion where Apple will be
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`taking an understudy role, these factors are inapplicable.
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`The sixth factor is the finite resources of the Board. Allowing Apple’s joinder
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`motion where it will serve in an understudy role will not impact the Board’s
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`resources beyond those resources the Board dedicates to the instant joinder motion.
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`The seventh factor is the requirement under 35 U.S.C. § 316(a)(11) to issue a
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`final determination not later than 1 year after the date on which the Director notices
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`institution of review. As noted above, joining Apple should not impact the schedule.
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`
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`11
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`Accordingly, this factor weighs in favor of institution.
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`An eighth factor identified by the Board in Shenzhen is the extent to which
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`the petitioner and any prior petitioner(s) were similarly situated defendants or
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`otherwise realized a similar-in-time hazard regarding the challenged patent.
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`Shenzhen Silver Star Intelligent Tech. Co., Ltd. v. iRobot Corp., IPR2018-00898,
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`Paper 9 at 7, 13-14 (PTAB Oct. 1, 2018) (noting “the purpose of proposed Factor 8
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`is to discourage tactical filing of petitions over time by parties that faced the same
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`threat at the same time” such that earlier petitions are filed as “test case(s)” to gain
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`“tactical advantage”). Because Apple’s petition does not introduce any new grounds
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`of unpatentability and will effectively merge into a single proceeding with
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`Samsung’s IPR, no such tactical advantage is gained here.
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`Thus, none of the General Plastic factors weighs against institution and
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`joinder in this situation.
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`V. CONCLUSION
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`Based on the factors discussed above, Petitioner Apple respectfully requests
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`that the Board grant the Apple Petition for Inter Partes Review of U.S. Patent No.
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`6,072,450 and then grant joinder with the Samsung Display Co., Ltd. And Dell Inc.,
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`IPR2020-00140 proceeding.
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`Respectfully submitted,
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`ERISE IP, P.A.
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`
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`12
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`
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`Dated: June 8, 2020
`
`
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`
`
` /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.
`5299 DTC Boulevard
`Suite 1340
`Greenwood Village, CO 80111
`Telephone: (913) 777-5600
`Fax: (913) 777-5601
`
`Counsel for Petitioner Apple Inc.
`
`
`
`13
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a true and correct copy of the Motion for
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`Joinder has been served on the Patent Owner via Federal Express or by means at
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`least as fast and reliable as Federal Express on the below date, at the following
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`address:
`
`Holtz, Holtz & Volek, PC
`630 Ninth Avenue
`Suite 1010
`New York, NY 10036-3744
`
`With an additional courtesy copy sent to patent owner's litigation counsel:
`
`Gregory S. Dovel
`Sean A. Luner
`Jonas B. Jacobson
`DOVEL & LUNER, LLP
`201 Santa Monica Blvd., Suite 600
`Santa Monica, CA 90401
`(310) 656-7066
`
`Marc Fenster
`Reza Mirzaie
`Neil A. Rubin
`Kent N. Shum
`Theresa Troupson
`RUSS AUGUST & RABAT
`12424 Wilshire Blvd. 12th Floor
`Los Angeles, CA 90025
`(310) 826-7474
`
`
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`
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`14
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`
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`Dated: June 8, 2020
`
`Respectfully submitted,
`
`ERISE IP, P.A.
`
`
` /s/ Adam P. Seitz
`Adam P. Seitz (Reg. No. 52,206)
`
`Counsel for Petitioner Apple Inc.
`
`
`
`15
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`
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