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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`___________________________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`GUI GLOBAL PRODUCTS, LTD.,
`Patent Owner.
`____________
`
`Case IPR2021-01289
`Patent 10,259,020 B2
`___________________________
`
`
`PATENT OWNER’S RESPONSE TO
`PETITIONER’S CONDITIONAL MOTION FOR JOINDER
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`
`
`TABLE OF CONTENTS
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`
`
`I.
`II.
`III.
`
`INTRODUCTION ........................................................................................... 1
`BACKGROUND ............................................................................................. 1
`JOINDER IS APPROPRIATE ........................................................................ 3
`A.
`Joinder with the 335 Proceeding Would be Appropriate ...................... 3
`B.
`Joinder Would Not Add Any New Grounds of
`Unpatentability ...................................................................................... 5
`Joinder Would Not Impact the 335 Proceeding’s Trial
`Schedule ................................................................................................ 6
`D.
`Procedures to Simplify Briefing and Discovery ................................... 6
`IV. CONCLUSION ................................................................................................ 9
`
`
`C.
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`
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`PO Response re Joinder
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`Page i
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`
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`TABLE OF AUTHORITIES
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`CASES
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`Kyocera Corp. v. Softview LLC,
`IPR2013-00004 (PTAB Apr. 24, 2013) .......................................................... 3
`
`Noven Pharmaceuticals, Inc. v. Novartis AG,
`IPR2014-00550 (PTAB Apr. 10, 2015) .......................................................... 7
`
`Samsung Elecs. Co., Ltd. v. Raytheon Co.,
`IPR2016-00962 (Aug. 24, 2016) ..................................................................... 5
`
`Sony Corp., et al. v. Memory Integrity, LLC,
`IPR2015-01353 (PTAB Oct. 15, 2015) ........................................................... 6
`
`
`STATUTES
`
`35 U.S.C. § 315(c) ................................................................................................. 3
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`
` REGULATIONS
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`37 C.F.R. § 42.1(b) ................................................................................................ 1
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`37 C.F.R. § 42.122(b) ............................................................................................ 3
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`
`
`
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`PO Response re Joinder
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`Page ii
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`
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`I.
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`INTRODUCTION
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`Petitioner, Apple, seeks joinder with the 335 Proceeding, but only if, and
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`only if, the Board has previously denied institution of Apple Inc., v. GUI Global
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`Products, Ltd., IPR2021-00470. Mot. at 1. That condition was not met and the 470
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`Proceeding has been instituted. Nevertheless, Patent Owner opposes the
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`conditional nature of Apple’s motion and requests that if the Board institutes this
`
`1289 Proceeding, it join this 1289 Proceeding with the 335 Proceeding. Joinder
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`with the 335 Proceeding is appropriate because the present Petition introduces
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`identical unpatentability arguments and the same grounds raised in the petition of
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`the 335 Proceeding, without any change to the facts, citations, evidence, or
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`arguments used in demonstrating satisfaction of the implicated claims by the
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`applied prior art. Under these circumstances, involving identical grounds and
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`identical unpatentability arguments, instituting this proceeding and not joining it
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`with the 335 Proceeding would be contrary to the requirement of ensuring just,
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`speedy, and inexpensive resolution of these proceedings. 37 C.F.R. § 42.1(b).
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`
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`II. BACKGROUND
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`On February 11, 2021, Petitioner, Apple, filed a petition in IPR2021-00470
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`(“the 470 Proceeding”) challenging claims of U.S. Patent No. 10,259,020 (“the
`
`’020 Patent”). Trial in the 470 Proceeding was instituted on August 13, 2021.
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`PO Response re Joinder
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`Page 1 of 9
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`Apple has now filed an additional petition (the “Copycat Petition”) in IPR2021-
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`01289 (“the 1289 Proceeding”) challenging claims of the ’020 Patent and
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`concurrently filed a “conditional” motion for joinder with Samsung, et al., v. GUI
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`Global Products, Ltd., IPR2021-00335 (“the 335 Proceeding”), which was
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`instituted on July 2, 2021. The Copycat Petition in the 1289 Proceeding is
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`substantively identical to the petition filed by Samsung in the 335 Proceeding,
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`relies on the same prior art evidence and arguments as in the 335 Proceeding, and
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`is supported by testimony from the same declarant as in the 335 Proceeding, which
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`testimony is substantively identical to that which the declarant provided in the 335
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`Proceeding.
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`Apple styled its motion for joinder as being conditional upon the Board
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`denying institution of the 470 Proceeding. Mot. at 1. That condition was not met,
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`as the Board instituted the 470 Proceeding on August 13, 2021.
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`Apple has filed similar “copycat” petitions and “conditional” motions for
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`joinder in each of IPR2021-01290, IPR2021-01291, and IPR2021-01292, with
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`respect to IPR2021-00336, IPR2021-00337, and IPR2021-00338, all of which have
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`been instituted. Similar to the situation here, the conditions for joinder specified in
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`the motions were not met, because trials with respect to Apple’s earlier petitions in
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`each of IPR2021-00471, IPR2021-00472, and IPR2021-00473 have been
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`instituted.
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`PO Response re Joinder
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`Page 2 of 9
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`III. JOINDER IS APPROPRIATE
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`As noted in Apple’s motion, joinder is a matter committed to the Board’s
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`discretion. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); see also Kyocera Corp. v.
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`Softview LLC, IPR2013-00004, Paper 15 at 3 (PTAB Apr. 24, 2013) (“Joinder may
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`be authorized when warranted, but the decision to grant joinder is discretionary.”).
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`In determining whether or not to join two proceedings, the Board may consider
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`reasons why joinder is appropriate, whether any new grounds of unpatentability are
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`raised in the second petition, whether and how the cost and schedule of the first
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`proceeding will be impacted if joinder is granted, and whether granting joinder will
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`add to the complexity of briefing and/or discovery. Id. at 3-4. Here, consideration
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`of these issues demonstrates that joinder is appropriate notwithstanding that
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`Apple’s condition for requesting same has not been met.
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`
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`A.
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`Joinder with the 335 Proceeding Would be Appropriate
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`Apple admits that its Petition in this 1289 Proceeding “is materially the same
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`as the petition filed in the 335 Proceeding[, and that t]he Petition and the petition in
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`the 335 Proceeding challenge the same claims, on the same grounds and rely on the
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`same prior art and evidence, including an identical declaration from the same
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`expert.” Mot at 9. In other words, by joining this proceeding to the 335 Proceeding,
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`PO Response re Joinder
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`Page 3 of 9
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`there would be no new grounds for institution or evidence or arguments advanced
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`in support thereof than are already present in the instituted 335 Proceeding.
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`Further, joinder would simplify the totality of the disputes among the parties.
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`Joinder would permit a single framework for the parties and the Board to address
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`the unpatentability arguments advanced in both this and the 335 Proceeding. Apple
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`agrees there are efficiencies to be achieved through joinder and that these
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`efficiencies come without prejudice to the parties. Mot. at 10.
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`Apple conditions it motion on the 470 Proceeding not being instituted, Mot.
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`at 1, but there is no good reason for the Board to institute this 1289 Proceeding and
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`yet deny joinder with the 335 Proceeding as having two parallel proceedings that
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`“challenge the same claims, on the same grounds and rely on the same prior art and
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`evidence, including an identical declaration from the same expert” would be not
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`only inefficient but also entirely duplicative of the time and costs which both the
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`Board and Patent Owner would have to incur. Rather than a single framework that
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`would allow for resolution through a single final decision of the Board, the result
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`of instituting this 1289 Proceeding and denying joinder with the 335 Proceeding
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`would be unnecessary relitigating of arguments concerning challenges to the same
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`claims that are based on the same grounds and which rely on the same prior art and
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`evidence, which could even lead to inconsistent results among the proceedings.
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`Not only would this inconvenience the parties and the Board, it may even induce
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`PO Response re Joinder
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`Page 4 of 9
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`future gamesmanship among petitioners in future cases seeking exactly this kind of
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`result. Rather than inviting such outcomes, the Board can guard against them
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`through joinder of this proceeding with the 335 Proceeding, a practice that would
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`be consistent with its past actions. See, e.g., Samsung Elecs. Co., Ltd. v. Raytheon
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`Co., IPR2016-00962, Paper No. 12 at 9 (Aug. 24, 2016) (The Board “routinely
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`grants motions for joinder where the party seeking joinder introduces identical
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`arguments and the same grounds raised in the existing proceeding.”) (internal
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`quotations and citations omitted).
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`
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`B.
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`Joinder Would Not Add Any New Grounds of Unpatentability
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`As noted in Apple’s motion, “The Petition is based on the same grounds and
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`combinations of prior art in the 335 Proceeding. For simplicity and efficiency,
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`Petitioner has copied the substance of the petition in the 335 Proceeding and its
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`accompanying expert declaration Petitioner does not seek to introduce grounds or
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`claims not currently in the 335 Proceeding and seeks only to join the proceeding as
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`instituted.” Mot. at 11. Thus, Apple’s petition presents no new grounds for
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`unpatentability that are not already under review in the 335 Proceeding.
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`PO Response re Joinder
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`Page 5 of 9
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`C.
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`Joinder Would Not Impact the 335 Proceeding’s Trial Schedule
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`Because the present Petition presents no new issues or grounds of
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`unpatentability joinder would not impact the 335 Proceeding’s trial schedule. See
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`Sony Corp., et al. v. Memory Integrity, LLC, IPR2015-01353, Paper No. 11 at 6
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`(PTAB Oct. 15, 2015) (granting joinder where no additional briefing or discovery
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`beyond that already required in the original IPR is needed). For example, because
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`the arguments and evidence set forth in Apple’s present Petition are identical to
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`those at issue presented in the 335 Proceeding and because the present Petition
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`relies on the same expert declaration as in the 335 Proceeding, there will be no
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`need for any additional Patent Owner discovery beyond that required to respond to
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`the petition in the 335 Proceeding.
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`
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`D.
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`Procedures to Simplify Briefing and Discovery
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`To ensure there is no impact to the existing 335 Proceeding schedule, the
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`Board should join this 1289 Proceeding with Apple in an “understudy” role. More
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`specifically, so long as one or more original petitioners in the 335 Proceeding
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`remain, the joined proceedings should proceed with:
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`a) all filings by Apple in the joined proceeding consolidated with the
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`filings of the current petitioner in the 335 Proceeding, unless a filing solely
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`PO Response re Joinder
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`Page 6 of 9
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`concerns issues that do not involve the current petitioner in the 335
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`Proceeding;
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`b) Apple should not be permitted to raise any new grounds not
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`instituted by the Board in the 335 Proceeding, or introduce any argument or
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`discovery not introduced by the current petitioner in the 335 Proceeding (as
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`none are raised by Apple’s Petition in this 1289 Proceeding, this condition
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`should not be controversial);
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`c) Apple should be bound by any agreement between Patent Owner
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`and the current petitioner in the 335 Proceeding concerning discovery and/or
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`depositions; and
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`d) At deposition, Apple should not receive any direct, cross
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`examination or redirect time beyond that permitted under either 37 C.F.R. §
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`42.53 or any agreement between Patent Owner and the current petitioner in
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`the 335 Proceeding.
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`See Noven Pharmaceuticals, Inc. v. Novartis AG, IPR2014-00550, Paper No. 38 at
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`5 (PTAB Apr. 10, 2015). Unless and until the current petitioner in the 335
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`Proceeding ceases to participate, Apple should not be permitted to assume an
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`active role in the 335 Proceeding.
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`With Apple in an “understudy” role, the parties can comply with the trial
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`schedule assigned to the 335 Proceeding without needing any duplicative efforts by
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`PO Response re Joinder
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`Page 7 of 9
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`the Board or the Patent Owner. These steps minimize the possibility of any
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`complication or delay from joinder. As noted above, there are no new issues for the
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`Board or Patent Owner to address, so Patent Owner should not require any
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`additional time to prepare its Response. Apple is not prejudiced by the above
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`conditions because inasmuch as this 1289 Proceeding presents a “copycat” to the
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`335 Proceeding, Apple’s interests are aligned with and identical to those of the
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`current petitioner in the 335 Proceeding and so will be adequately safeguarded
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`even with Apple acting as an understudy. In the event that current petitioner in the
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`335 Proceeding were to seek dismissal, Apple could be restored to an active
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`participant in the 335 Proceeding to carry on with the case. Additionally,
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`throughout the entire progress of the 335 Proceeding Apple would be continuing
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`with its 470 Proceeding and could advance its own interests therein.
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`Thus, notwithstanding Apple’s condition for joinder being absent, joinder
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`with the 335 Proceeding is nevertheless appropriate and should be ordered because
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`the current Petition introduces identical unpatentability arguments and the same
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`grounds raised in the petition of the 335 Proceeding, without any change to the
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`facts, citations, evidence, or arguments used in demonstrating satisfaction of the
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`implicated claims by the applied prior art, and not doing so would lead to
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`unnecessary duplication should this 1289 Proceeding be instituted. This would be
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`PO Response re Joinder
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`Page 8 of 9
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`contrary to the requirement of 37 C.F.R. § 42.1(b) to “secure the just, speedy, and
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`inexpensive resolution” of this proceeding.
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`IV. CONCLUSION
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`For the foregoing reasons, Patent Owner respectfully requests that if the
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`Board institutes this 1289 Proceeding, it also joins this 1289 Proceeding with the
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`335 Proceeding, notwithstanding that Apple’s condition for joinder was not met.
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`Date: August 30, 2021
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`
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`Respectfully submitted,
`
`
`/ John J. Edmonds /
`John J. Edmonds, Reg. No. 56,184
`EDMONDS & SCHLATHER, PLLC
`2501 Saltus Street
`Houston, TX 77003
`P: 713-364-5291
`F: 713-224-6651
`E: jedmonds@ip-lit.com
`
`Counsel for Patent Owner
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`PO Response re Joinder
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`Page 9 of 9
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing
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`PATENT OWNER’S RESPONSE TO
`PETITIONER’S CONDITIONAL MOTION FOR JOINDER
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`and its accompanying exhibits were served on August 30, 2021, by filing this
`document though the PTAB E2E System as well as by delivering a copy via email
`directed to the attorneys of record for the Petitioner at the following addresses:
`
`W. Karl Renner
`Andrew B. Patrick
`Roberto Devoto
`Kenneth Wayne Darby Jr.
`Kim Leung
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`
`
`Email:
`IPR50095-0028IP2@fr.com
`PTABInbound@fr.com
`axfptab@fr.com
`patrick@fr.com
`devoto@fr.com
`kdarby@fr.com
`leung@fr.com
`
`The parties have agreed to electronic service in this proceeding.
`
`
`Dated: August 30, 2021
`
`
`
`
`
`/ John J. Edmonds /
`John J. Edmonds
`
`
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`PO Response Certificates
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