Filed: January 6, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GOOGLE LLC,
`Petitioner
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`v.
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`GESTURE TECHNOLOGY PARTNERS LLC,
`Patent Owner
`____________
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`Case No. IPR2022-00361
`U.S. Patent No. 8,194,924
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`MOTION FOR JOINDER TO INTER PARTES REVIEW
`IPR2021-00923
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`GOOGLE LLC,
`Petitioner
`
`v.
`
`GESTURE TECHNOLOGY PARTNERS LLC,
`Patent Owner
`____________
`
`Case No. IPR2022-00361
`U.S. Patent No. 8,194,924
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`
`
`
`
`
`
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW
`IPR2021-00923
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`Google’s Motion for Joinder to IPR2021-00923
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`TABLE OF CONTENTS
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`I. STATEMENT OF THE PRECISE RELIEF REQUESTED
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`II. STATEMENT OF MATERIAL FACTS
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
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`A. Legal Standard
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`B. Each of the Factors Weighs in Favor of the Board Granting the Motion for
`Joinder
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`1. Joinder with the Apple IPR Is Appropriate
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`2. Petitioner Does Not Propose New Grounds of Unpatentability
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`3. Joinder will Not Negatively Impact the Apple IPR Trial Schedule
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`4. Procedures To Simplify Briefing and Discovery
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`IV. CONCLUSION
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`i
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`Google’s Motion for Joinder to IPR2021-00923
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`TABLE OF AUTHORITIES
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`Cases
`AT&T Services, Inc. v. Broadband iTV, Inc.,
`IPR2021-00649, Paper 12 at 7-17 (August 25, 2021)
`Dell, Inc. v. Network-1 Security Sols., Inc.,
`IPR2013-00385, Paper 17 (July 29, 2013)
`HTC v. Parthenon Unified Memory Architecture LLC.,
`IPR2017-00512, Paper No. 12 (June 1, 2017)
`Kyocera Corp. v. Softview LLC.,
`IPR2013-00004, Paper 15 at 4 (Apr. 24, 2013)
`Noven Pharm., Inc. v. Novartis AG,
`IPR2014-00550, Paper No. 38 (Apr. 10, 2015)
`Par Pharm., Inc. v. Novartis AG,
`IPR2016-01023, Paper No. 20 (Oct. 27, 2016)
`Samsung Elecs. Co., Ltd. v. Raytheon Co.,
`IPR2016-00962, Paper No. 12 (Aug. 24, 2016)
`Sony Corp. v. Memory Integrity, LLC.,
`IPR2015-01353, Paper No. 11 (Oct. 5, 2015)
`Statutes
`35 U.S.C. § 315(c)
`Other Authorities
`37 C.F.R. § 42.1(b)
`37 C.F.R. § 42.22
`37 C.F.R. § 42.53
`37 C.F.R. § 42.122(b)
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`ii
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`8
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`4
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`1
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`4
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`7
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`5
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`4
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`4, 5, 6, 8
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`1, 3
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`1, 4
`1
`7
`1
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`Google’s Motion for Joinder to IPR2021-00923
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Google LLC (“Petitioner” or “Google”) respectfully submits this Motion for
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`Joinder concurrently with a Petition (“the Google petition”) for inter partes review
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`of U.S. Patent No. 8,194,924 (“the ’924 patent”).
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`Pursuant to 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.122(b), Google
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`requests institution of the concurrently filed Petition for inter partes review and
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`joinder with Apple Inc. v. Gesture Technology Partners LLC, IPR2021-00923 (“the
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`Apple IPR” or “the Apple proceeding”), which the Board instituted on December 6,
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`2021, and concerns the same claims 1–14 of the ’924 patent. This request is being
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`submitted within the time set forth in 37 C.F.R. § 42.122(b).
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`Google submits that the request for joinder is consistent with the policy
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`surrounding inter partes reviews, as it is the most expedient way “to secure the just,
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`speedy, and inexpensive resolution of every proceeding.” See 37 C.F.R. § 42.1(b);
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`see also HTC v. Parthenon Unified Memory Architecture LLC., IPR2017-00512,
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`Paper No. 12 at 5–6 (June 1, 2017). The Google petition and the Apple IPR are
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`substantively identical; they contain the same grounds (based on the same prior-art
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`combinations and supporting evidence) against the same claims (See Ex. 1018,
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`illustrating changes between the instant Petition and the Petition in IPR2021-00923.)
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`Further, upon joining the Apple proceeding, Google will act as an “understudy” and
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`1
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`Google’s Motion for Joinder to IPR2021-00923
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`will not assume an active role unless the current petitioner ceases to participate in
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`the instituted IPR. Accordingly, the proposed joinder will neither unduly complicate
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`the Apple IPR nor delay its schedule. As such, the joinder will promote judicial
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`efficiency in determining the patentability of the ’924 patent without prejudice to
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`Patent Owner. Apple does not oppose this motion for joinder.
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`II.
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`STATEMENT OF MATERIAL FACTS
`1.
`The ’924 patent is or was at issue in the following patent infringement
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`actions: Case Nos. 6:21-cv-00123 (W.D. Tex.) (transferred to District of New Jersey
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`as case number 2:21-cv-19234 (D.N.J)); 6:21-cv-00121 (W.D. Tex.)1; 6:21-cv-
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`00122 (W.D. Tex.)2; and consolidated cases 2:21-cv-00040 (E.D. Tex.) (defendant
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`Huawei dismissed with prejudice); and 2:21-cv-00041 (E.D. Tex.).
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`1 The court granted Apple Inc.’s motion to stay pending the final written decision
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`on the inter partes review of the asserted patents. Gesture Technology Partners,
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`LLC v. Apple Inc., No. 6:21-cv-00121 (W.D. Tex. Dec. 29, 2021).
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`2 The court granted a motion to dismiss the case against Lenovo (United States)
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`Inc. and Motorola Mobility LLC for improper venue. Gesture Technology
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`Partners, LLC v. Lenovo Group Ltd. et al., No. 6:21-cv-00122, Dkt. 43 (W.D. Tex.
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`Dec. 29, 2021). The remaining defendant in that case—Lenovo Group Ltd.—was
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`not served. Id. at 1 n.1.
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`2
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`Google’s Motion for Joinder to IPR2021-00923
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`2.
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`On May 26, 2021, Apple Inc. filed a petition for inter partes review
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`(IPR2021-00923) requesting cancellation of claims 1–14 of the ’924 patent.
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`3.
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`On December 6, 2021, the Board instituted the Apple petition for inter
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`partes review as to all challenged claims and all grounds.
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`4.
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`The Google petition and the Apple petition are substantially identical;
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`they contain the same grounds (based on the same prior-art combinations and
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`supporting evidence) against the same claims (See Ex. 1018.)
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`5.
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`The ’924 patent is or was also at issue in another IPR proceeding: Case
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`No. IPR2022-00093. On November 5, 2021, LG Electronics, Inc., and LG
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`Electronics U.S.A., Inc., concurrently filed a petition for inter partes review
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`(IPR2022-00093) requesting cancellation of claims 1–14 of the ’924 patent and a
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`motion for joinder to IPR2021-00923.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`A. Legal Standard
`Pursuant to 35 U.S.C. § 315(c), the Board may grant a motion for joining an
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`inter partes review petition with another inter partes review proceeding. The Board,
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`in determining whether to exercise its discretion to grant joinder, considers (1) “why
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`joinder is appropriate”; (2) “whether a new ground of unpatentability is raised in the
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`second petition”; (3) “how the cost and schedule of the first proceeding will be
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`impacted if joinder is granted”; and (4) “whether granting joinder will add to the
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`3
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`Google’s Motion for Joinder to IPR2021-00923
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`complexity of the briefing and/or discovery.” Consolidated Trial Practice Guide 76
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`(Nov. 2019); see also Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at
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`4 (PTAB Apr. 24, 2013); Dell, Inc. v. Network-1 Security Sols., Inc., IPR2013-
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`00385, Paper 17 at 3 (PTAB July 29, 2013).
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`B.
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`Each of the Factors Weighs in Favor of the Board Granting the
`Motion for Joinder
`All four factors weigh in favor of granting Google’s motion for joinder. The
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`Google petition is substantively identical to the petition in the Apple IPR. Google
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`does not present any new grounds of unpatentability. Additionally, as all issues are
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`substantively identical and Google will act as an “understudy,” joinder will have
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`minimal or no impact on the pending schedule of the Apple IPR. See Sony Corp., et
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`al. v. Memory Integrity, LLC, IPR2015-01353, Paper 11 at 6 (Oct. 5, 2015) (granting
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`motion for joinder where petitioners requested an “understudy” role). Moreover, the
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`briefing and discovery will be simplified by resolving all issues in a single
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`proceeding. Accordingly, joinder is appropriate.
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`1.
`Joinder with the Apple IPR Is Appropriate
`The Board “routinely grants motions for joinder where the party seeking
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`joinder introduces identical arguments and the same grounds raised in the existing
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`proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper 12
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`at 9 (Aug. 24, 2016) (internal citations omitted). Here joinder with the Apple IPR is
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`appropriate because the Google petition introduces identical arguments and the same
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`Google’s Motion for Joinder to IPR2021-00923
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`grounds raised in the existing Apple proceeding (i.e., it challenges the same claims
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`of the same patent, relies on the same expert declaration, and is based on the same
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`grounds and combinations of prior art submitted in the Apple petition). Other than
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`minor differences, such as differences related to formalities of a different party filing
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`the petition and an analysis of Fintiv factors, there are no changes to the facts,
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`citations, evidence, or arguments introduced in the Google petition. Because these
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`proceedings are substantively identical, good cause exists for joining this proceeding
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`with the Apple IPR so that the Board, consistent with 37 C.F.R. § 42.1(b), can
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`efficiently “secure the just, speedy, and inexpensive resolution” of the Google and
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`Apple petitions in a single proceeding.
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`2.
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`Petitioner Does Not Propose New Grounds of
`Unpatentability
`The Google petition is substantively identical to the petition in the Apple IPR
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`(i.e., challenging the same claims of the same patent, relying on the same expert
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`declaration, and on the same grounds and combinations of prior art submitted in the
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`Apple petition). See Sony, IPR2015-01353, Paper 11 at 5–6 (Oct. 5, 2015) (granting
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`institution of IPR and motion for joinder where petitions relied “on the same prior
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`art, same arguments, and same evidence, including the same expert and a
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`substantively identical declaration”); see also Par Pharm., Inc., v. Novartis AG,
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`IPR2016-01023, Paper 20 at 14 (Oct. 27, 2016) (granting motion for joinder where
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`petitioners “do not assert any new ground of unpatentability that is not already being
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`Google’s Motion for Joinder to IPR2021-00923
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`considered in [an instituted IPR proceeding], relying on the same arguments and
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`evidence, and do not require any modification to the existing schedule”).
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`3.
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`Joinder will Not Negatively Impact the Apple IPR Trial
`Schedule
`Joinder will have minimal impact, if any, on the Apple IPR trial schedule
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`because the Google petition presents no new issues or grounds of unpatentability.
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`See Sony Corp., IPR2015-01353, Paper 11 at 6 (granting IPR and motion for joinder
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`where “joinder should not necessitate any additional briefing or discovery from
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`Patent Owner beyond that already required in [the original IPR]”). Further,
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`Petitioner explicitly consents to the existing trial schedule. There are no new issues
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`for the Board to address, and Patent Owner will not be required to present any
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`additional responses or arguments.
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`Patent Owner’s Response will also not be negatively impacted because the
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`issues presented in the Google 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 petition in the
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`Apple IPR. Also, because the Google petition relies on the same expert and the same
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`declaration, only a single deposition is needed for the proposed joined proceeding.
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`Accordingly, joinder with the Apple IPR does not unduly burden or negatively
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`impact the trial schedule.
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`6
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`Google’s Motion for Joinder to IPR2021-00923
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`4.
`Procedures To Simplify Briefing and Discovery
`Google explicitly agrees to take an “understudy” role, which will simplify
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`briefing and discovery. Specifically, Google explicitly agrees, upon joining the
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`Apple proceeding, that the following conditions, as previously approved by the
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`Board in similar circumstances, shall apply so long as the current petitioner in
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`IPR2021-00923 remains an active party:
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`a. all filings by Google in the joined proceedings will be consolidated with the
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`filings of the current petitioner, unless a filing concerns issues solely
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`involving Google;
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`b. Google shall not be permitted to raise any new grounds not already instituted
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`by the Board in the Apple IPR, or introduce any argument or discovery not
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`already introduced by the current petitioner;
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`c. Google shall be bound by any agreement between Patent Owner and the
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`current petitioner concerning discovery and/or depositions; and
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`d. at deposition, Google shall not receive any direct, cross examination, or
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`redirect time beyond that permitted under 37 C.F.R. § 42.53 or any agreement
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`between Patent Owner and the current petitioner.
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`See Noven Pharm, Inc. v. Novartis AG, IPR2014-00550, Paper No. 38 at 5 (Apr. 10,
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`2015). Unless and until the current petitioner ceases to participate in the instituted
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`IPR proceeding, Google will not assume an active role therein.
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`Google’s Motion for Joinder to IPR2021-00923
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`Thus, by Google accepting an “understudy” role, Patent Owner and the
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`current petitioner can comply with the existing trial schedule without needing any
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`duplicative efforts by the Board or Patent Owner. These steps will minimize any
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`potential complications or delay that potentially may result by joinder. See Sony
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`Corp., IPR2015-01353, 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). Google is further willing to agree
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`to any other reasonable conditions the Board deems necessary.3
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`3 Google further notes that a joinder petition in these circumstances is not the type
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`of serial petition to which a General Plastic’s analysis applies as there is no
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`strategic advantage to be gained by filing this additional petition, and there are no
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`concerns of “road mapping” the Patent Owner’s strategy because Petitioner has
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`submitted a petition that is substantively identical to Apple’s petition. See AT&T
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`Services, Inc. v. Broadband iTV, Inc., IPR2021-00649, Paper 12 at 7-17 (August
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`25, 2021) (instituting IPR on a “me-too” petition despite being filed after the
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`PTAB’s institution decision on the primary petition.).
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`Google’s Motion for Joinder to IPR2021-00923
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`IV. CONCLUSION
`Based on the factors discussed above, Google respectfully requests that the
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`Board grant institution of the Google petition and grant joinder with the Apple IPR.
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`Dated: January 6, 2021
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`Respectfully submitted,
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`
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`By: /Erika H. Arner/
`Erika H. Arner, Reg. No. 57,540
`COUNSEL FOR PETITIONER
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`Google’s Motion for Joinder to IPR2021-00923
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105, the undersigned certifies that on
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`January 6, 2022, a copy of the foregoing Motion for Joinder to Inter Partes Review
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`IPR2021-00923 was served by FedEx Priority Overnight on the correspondence
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`address of record indicated in the Patent Office’s public PAIR system for U.S. Patent
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`No. 8,194,924:
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`Vito A. Ciaravino
`Warner Norcross + Judd LLP
`Intellectual Property Group
`150 Ottawa Ave. NW, Suite 1500
`Grand Rapids, MI 49503
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`Further, a courtesy copy of the foregoing was also sent via email to Patent
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`Owner’s litigation counsel:
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`Fred I. Williams (fwilliams@wsltrial.com)
`Michael Simons (msimons@wsltrial.com)
`Jonathan L. Hardt (jhardt@wsltrial.com)
`Chad Ennis (cennis@wsltrial.com)
`Todd E. Landis (tlandis@wsltrial.com)
`John Wittenzellner (johnw@wsltrial.com)
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`BY: /Lisa C. Hines/
`Lisa C. Hines
`Senior Litigation Legal Assistant
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`FINNEGAN, HENDERSON, FARABOW,
`GARRETT, & DUNNER, LLP
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