UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`GUI GLOBAL PRODUCTS, LTD.,
`Patent Owner
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`Case IPR2021-01289
`Patent 10,259,020
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE TO
`PETITIONER’S CONDITIONAL MOTION FOR JOINDER
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`GUI GLOBAL PRODUCTS, LTD.,
`Patent Owner
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`Case IPR2021-01289
`Patent 10,259,020
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE TO
`PETITIONER’S CONDITIONAL MOTION FOR JOINDER
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`Atty. Dkt. 50095-0028IP2
`U.S. Patent No. 10,259,020
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`I.
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`INTRODUCTION AND BACKGROUND
`On July 30, 2021, Apple filed a Conditional Motion for Joinder (Pap.
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`4)(“Motion”) to Samsung, et al., v. GUI Global Products, Ltd., IPR2021-00335 (“the
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`335 Proceeding”). In the Motion, Apple requested that joinder be granted “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 (‘the 470 Proceeding’).” Pap. 4 at 1 (original
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`emphasis). On August 13, 2021, the Board instituted review in the 470 Proceeding,
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`rendering unmet the necessary condition for joinder expressed in Apple’s pending
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`Motion. On August 30, 2021, GUI filed a Response contending “that joinder is
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`appropriate notwithstanding that Apple’s condition for requesting the same has not
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`been met.” Pap. 8 at 3.
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`Following GUI’s Response, Apple conferred with GUI regarding the
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`possibility of Apple filing a renewed joinder motion that would instead be
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`conditioned on harmonization of timing between the respective oral hearings and/or
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`final written decisions of the 470 Proceeding and the 335 Proceeding, so as to avoid
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`issues of estoppel that might otherwise arise in connection with 35 U.S.C. §
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`315(e)(1). GUI opposed the proposed alignment of oral hearings, which it said
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`“would cause a ripple effect and shift all the other dates earlier in the schedule,”1 but
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`1 Petitioner will provide documentation of the email exchange at the Board’s request.
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`1
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`Atty. Dkt. 50095-0028IP2
`U.S. Patent No. 10,259,020
`GUI did not respond when asked whether GUI would oppose alignment of only the
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`final written decisions. On September 14, 2021, Apple approached the Board by
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`email with its request to file a renewed joinder motion. On September 20, 2021, the
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`Board declined to authorize such a motion, and instead authorized Apple to “address
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`issues raised in Patent Owner’s Responses to Petitioner’s Conditional Motion for
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`Joinder in Replies, which are due on September 30, 2021.” Apple replies as follows.
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`II. ARGUMENT AND RELIEF REQUESTED
`But for the fact that the condition for requesting joinder expressed in Apple’s
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`pending Motion has not been met, Apple and GUI agree that “joinder is appropriate”
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`(Paper 8 at 3), in the sense that all of joinder’s other requirements are satisfied. See
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`Paper 4 at 8-14; Paper 8 at 3-9. The parties diverge as to whether unconditioned
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`joinder of Apple as a party to the 335 Proceeding would be appropriate in view of
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`the 470 Proceeding’s institution. GUI “opposes the conditional nature of Apple’s
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`motion” and contends joinder should occur “notwithstanding that Apple’s condition
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`for requesting [the] same has not been met.” Paper 8 at 1, 3. As explained in more
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`detail below, however, unconditioned joinder is potentially prejudicial to Apple.
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`As such, consistent with GUI’s request that Apple be a joined as a party to the
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`335 Proceeding if the Board institutes the IPR2021-01289 petition, Apple hereby
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`augments the unmet condition stated in Apple’s pending Motion with the following
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`additional condition by which joinder may be achieved: Apple respectfully requests
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`2
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`Atty. Dkt. 50095-0028IP2
`U.S. Patent No. 10,259,020
`that the Board institute review of IPR2021-01289 and grant Apple’s pending Motion
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`if, and only if, the Board will align in time the issuance of final written decisions in
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`the 335 Proceeding and the 470 Proceeding, where alignment is achieved only if the
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`final written decision of the 470 Proceeding issues concurrent with or in advance of
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`the final written decision of the 335 Proceeding. In conditioning joinder in this way,
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`Apple seeks to avoid a scenario in which Apple might be estopped under 35 U.S.C.
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`§ 315(e)(1) from maintaining the 470 Proceeding, and in which the 470 Proceeding
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`might potentially be terminated prior to issuance of a final written decision.
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`A. Unconditioned Joinder Is Potentially Prejudicial to Apple
`GUI argues that “not joining [Apple] with the 335 Proceeding would be
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`contrary to the requirement of ensuring just, speedy, and inexpensive resolution of
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`these proceedings.” Paper 8 at 1 (citing 37 C.F.R. §42.1(b)). But GUI fails to
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`address the potential prejudice posed to Apple and to the instituted 470 Proceeding
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`by estoppel under § 315(e)(1), if Apple were joined as a party to the 335 Proceeding,
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`and if the 335 Proceeding’s final written decision were to issue in advance of that of
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`the 470 Proceeding. See Facebook Inc., et al. v. Uniloc USA, Inc., et al., IPR2017-
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`01427, Paper 30 at 4-6 (May 29, 2018) (finding petitioner Facebook estopped from
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`maintaining inter partes review on claims addressed by an earlier final written
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`decision in a proceeding to which Facebook was joined), aff’d, Uniloc 2017 LLC v.
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`Facebook Inc., 989 F.3d 1018, 1030 (Fed. Cir. 2021).
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`3
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`Atty. Dkt. 50095-0028IP2
`U.S. Patent No. 10,259,020
`Unconditioned joinder would open the door to an estoppel scenario similar
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`but not identical to that of Facebook, which would prevent Apple from participating
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`in the instituted 470 Proceeding in which Apple is the sole petitioner. Unlike
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`Facebook, that estoppel might yield subsequent termination of the 470 Proceeding
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`prior to a final written decision on the merits, a result that would be counter to 37
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`CFR § 42.1’s goal of securing a “just … resolution of every proceeding.”
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`B. Apple’s Reasonable Condition on Joinder is Fair to Both Parties
`Conditioning joinder on the alignment in time of final written decisions would
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`promote the parties’ shared interest in joinder without prejudice to either party, while
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`also preventing the unnecessary morass of an estoppel issue ripening in the 470
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`Proceeding. This condition can be implemented without prejudice to GUI because
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`the statutory deadline for a final written decision in the 335 Proceeding (July, 2,
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`2022) is only 1.5 months ahead of the corresponding deadline in the 470 Proceeding
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`(August 19, 2022). Indeed, as shown in the table below, each proceeding can
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`otherwise progress as presently scheduled, with respective oral hearings on April 12,
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`2022 (335 Proceeding) and May 19, 2022 (470 Proceeding).
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`Proceeding
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`Filing
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`Institution Hearing
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`FWD Deadline
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`IPR2021-00335 12/29/2020
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`7/2/2021
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`4/12/2022
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`7/2/2022
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`IPR2021-00470
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`2/11/2021
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`8/13/2021 5/19/2022
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`8/13/2022
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`GUI’s concern of “shift[ing] all the other dates earlier in the schedule” is
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`4
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`Atty. Dkt. 50095-0028IP2
`U.S. Patent No. 10,259,020
`resolved by simply leaving those other dates in place. Further, GUI would not be
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`prejudiced by receiving a final written decision in the 470 Proceeding earlier than
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`scheduled. And GUI has already confirmed that the other aspects of joinder are fair
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`and “appropriate.” See Paper 8 at 1 (“Joinder with the 335 Proceeding is appropriate
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`because…”), 3-9. For example, “[w]ith Apple in an ‘understudy’ role, the parties
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`can comply with the trial schedule assigned to the 335 Proceeding without needing
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`any duplicative efforts by the Board or the Patent Owner.” Id. at 7-8.
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`Moreover, in addition to ensuring that Apple could continue “with its 470
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`Proceeding and could advance its own interests therein” “throughout the entire
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`progress of the 335 Proceeding” (as GUI states in its Response at 8), joinder based
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`on the additional condition expressed in this Reply would ensure that Apple is not
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`estopped from maintaining the 470 Proceeding through final written decision.
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`III. CONCLUSION
`Apple respectfully submits that unconditioned joinder would be inconsistent
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`with 37 CFR § 42.1’s goal of “securing the just … resolution of every proceeding,”
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`but that joinder conditioned as expressed in this Reply would promote the shared
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`interests of the parties in securing a just, speedy, and inexpensive resolution of every
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`IPR proceeding currently pending with respect to the ’020 patent. Accordingly,
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`consistent with the aims expressed in GUI’s Response, Apple respectfully requests
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`joinder based on the additional condition expressed in this Reply.
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`5
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`Dated September 30, 2021
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`Atty. Dkt. 50095-0028IP2
`U.S. Patent No. 10,259,020
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`Respectfully submitted,
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` /Andrew B. Patrick/
`W. Karl Renner, Reg. No. 41,265
`Andrew B. Patrick, Reg. No. 63,471
`Roberto Devoto, Reg. No. 55,108
`Kenneth Wayne Darby Jr., Reg. No. 65,068
`Kim Leung, Reg. No. 64,399
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`(Control No. IPR2021-01289)
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`Attorneys for Petitioner
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`CERTIFICATE OF SERVICE
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`Atty. Dkt. 50095-0028IP2
`U.S. Patent No. 10,259,020
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`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on September 30,
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`2021, a complete and entire copy of this Reply to Patent Owner’s Response to
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`Petitioner’s Conditional Motion for Joinder was provided via email to the Patent
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`Owner by serving the correspondence email addresses of record as follows:
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`John J. Edmonds, Reg. No. 56,184
`EDMONDS & SCHLATHER, PLLC
`2501 Saltus Street
`Houston, TX 77003
`jedmonds@ip-lit.com
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`Tarek N. Fahmi, Reg. No. 41,402
`Ascenda Law Group, PC
`2150 N. First St., Suite 420
`San Jose, CA 95131
`tarek.fahmi@ascendalaw.com
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`Stephen F. Schlather, Reg. No. 45,081
`EDMONDS & SCHLATHER, PLLC
`2501 Saltus Street
`Houston, TX 77003
`sschlather@ip-lit.com
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`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(617) 956-5938
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