`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`RFCYBER CORP.,
`Patent Owner
`_________________
`
`
`Case No. IPR2022-00412
`U.S. Patent No. 9,189,787
`
`PETITIONER’S REPLY IN SUPPORT OF 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 IPR2021-00980
`
`
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`PO does not dispute that (1) Petitioner timely filed its joinder request to the
`
`instituted Samsung IPR; (2) the Apple Petition is a substantively identical “copycat”
`
`of the instituted Samsung petition; and (3) Petitioner has agreed to join that
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`proceeding in an understudy role—each of which heavily support granting
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`Petitioner’s motion for joinder. PO’s opposition turns on an alleged agreement in
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`principle between PO and Samsung to settle their disputes. PO erroneously contends
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`that because the underlying parties will have settled before the Board rules on
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`joinder, 35 U.S.C. § 317 mandates the Board terminate the underlying proceeding,
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`leaving nothing for Petitioner to join. But Board precedent is clear that termination
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`under § 317 is discretionary, not mandatory, and the Board routinely refuses to
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`exercise this discretion when faced with pending joinder requests.
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`II.
`
`ARGUMENT
`A.
`Initially, PO is mistaken that “Section 317 requires the Board to terminate the
`
`The Equities Heavily Favor Joinder
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`Samsung IPR upon the request of the parties.” Paper 7, 4. To the contrary, the
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`statute’s plain language and Board precedent are clear that the Board retains
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`discretion to terminate review under § 317. § 317(a) states that “[a]n inter partes
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`review instituted under this chapter shall be terminated with respect to any
`
`petitioner upon the joint request of the petitioner and the patent owner” and that
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`“[i]f no petitioner remains in the inter partes review, the Office may terminate
`1
`
`
`
`
`
`the review or proceed to a final written decision[.]” 35 U.S.C. § 317 (emphasis
`
`added). Thus, § 317 mandates that a joint request to terminate the original petitioner
`
`be granted, but gives the Board discretion to weigh the equities when deciding to
`
`leave the proceeding open for a joining party.1 See Sony Mobile Commn’cs AB et al.
`
`v. Ancora Tech.’s, Inc., IPR2021-00663, Paper 17, at 30-31 (PTAB Jun. 10, 2021)
`
`(considering § 317, stating “the decision to terminate an IPR proceeding with respect
`
`to both parties after the parties file a settlement agreement is discretionary”)
`
`(emphasis added).
`
`The Board routinely exercises discretion not to terminate where, as here, a
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`joinder request is filed prior to a motion to terminate. For example, in Sony Mobile,
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`Sony moved to join before a motion to terminate. Id. at 31-32. The panel found that
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`“continuation of the [underlying] IPR was foreseeable and any prejudice to Patent
`
`Owner due to continuation is not undue.” Because Sony presented a copycat petition
`
`and agreed to an understudy role, the Board granted joinder. Id. at 32-33.
`
`Analogously, in AT&T Services, Inc. v. Convergent Media Solutions, LLC,
`
`IPR2017-01237, Paper 10 at 27 (PTAB May 10, 2017), patent owner argued that
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`because it settled its dispute with the petitioner in the pending review and jointly
`
`
`1 Notably, the Board has found the final clause of § 317 to provide even broader
`discretion to maintain the proceeding with no petitioner and proceed to a final written
`decision. See Blackberry Corp. et al v. MobileMedia Ideas, LLC, IPR2013-00036,
`Paper 64 at 2-3 (PTAB Jan. 21, 2014).
`
`
`
`2
`
`
`
`moved to terminate, the pending review must be terminated, and joinder denied. The
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`panel there “decide[d] Petitioner’s motion for joinder prior to acting on Patent
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`Owner’s joint motion to terminate” because the “Petition and motion for
`
`joinder…were…pending sufficiently in advance of Patent Owner’s filing of its
`
`motion to terminate.” Id.2
`
`Here, Petitioner filed its Petition and Motion for Joinder on January 14, 2022.
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`To date, PO and Samsung have not terminated the underlying litigation nor filed any
`
`motion to terminate IPR2021-00980. Moreover, there is no dispute that Petitioner
`
`followed the additional strictures warranting joinder by timely filing its petition
`
`challenging the same claims on identical grounds while agreeing to an understudy
`
`role. Under these facts, in line with Sony Mobile and AT&T Inc., the equities heavily
`
`favor granting joinder. See also Facebook Inc. v. Windy City Innovations, LLC,
`
`IPR2016-01141, Paper 49 at 4-7 (PTAB Aug. 14, 2017) (denying request for
`
`rehearing, finding decision to terminate only Microsoft on a joint motion to
`
`terminate and to join Facebook consistent with the applicable statutory provisions
`
`and Board rules); Qualcomm Inc. v. Bandspeed, Inc., IPR2015-00314, Paper 21, at
`
`3 (PTAB Nov. 16, 2015) (granting joinder despite joint motion to terminate);
`
`
`2 While the timing of the Board’s ruling on Petitioner’s joinder request is immaterial
`because § 317 provides discretion to leave open a proceeding after terminating a
`petitioner, the Board also has discretion to rule on the joinder request prior to a
`motion to terminate. See, e.g., 37 C.F.R. § 42.71(a) (“[t]he Board may take up
`petitions or motions for decisions in any order”).
`3
`
`
`
`
`
`Nintendo of Am., Inc. et al v. Babbage Holdings, LLC, IPR2015-00568, Paper 12 at
`
`3-5 (PTAB Mar. 18, 2015) (same); Sony Corp. of Am. et al. v. Network-1 Security
`
`Sol.’s, Inc., IPR2013-00495, Paper 13 at 9 (PTAB Sep. 16, 2013) (same).3
`
`B.
`
`The Petition Warrants Institution
`
`PO fails to articulate a single reason not to institute, but instead punts the issue
`
`to its POPR. Paper 7, 5. On substantive grounds, the Apple Petition mirrors
`
`Samsung’s already instituted petition verbatim. On discretionary grounds, PO fails
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`to provide any rebuttal to Petitioner’s General Plastic’s analysis and has waived its
`
`arguments relating to the same. Qualcomm Inc., IPR2015-00314, Paper 21, at 3
`
`(refusing to consider “Patent Owner’s joinder arguments presented in the
`
`Preliminary Response,” noting new arguments serve as “an unauthorized sur-reply
`
`to the Motion for Joinder”).
`
`There Is Minimal, If Any, Impact On The Trial Schedule
`
`C.
`PO also complains of schedule disruption if Petitioner is joined. Paper 7, 5-7.
`
`But PO’s conduct demonstrates little concern for the existing schedule. For example,
`
`
`3 PO’s relied upon law is distinguishable. See Paper 7, 3-5. In LG Elecs., Inc.,
`petitioner’s joinder request was denied because the underlying proceeding was
`already terminated prior to institution. In ZTE (USA) LLC, petitioner filed a joinder
`request only seven days prior to the joint motion to terminate, which sought
`termination of fourteen IPR proceedings. And in Mylan Techs., Inc., joinder was
`denied where petitioner already filed a prior petition which was denied and had
`previously sued patent owner twice and failed to timely file IPR petitions. None of
`these circumstances are present here.
`
`
`
`4
`
`
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`on February 24, 2022, PO filed a Notice of Stipulation, extending the due dates for
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`the Patent Owner Response, Petitioner Reply, and Patent Owner Sur-Reply.
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`Samsung IPR, Paper 14. Moreover, if PO was genuinely concerned with any impact
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`on the Samsung IPR trial schedule, PO could have moved to expedite the parties
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`briefing here by filing a waiver under 37 C.F.R. § 42.107(b). It did not. This would
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`have allowed the Board to rule on the instant joinder motion without waiting for
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`PO’s Preliminary Response.4
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`On the other hand, Petitioner “took the steps [the Board’s] cases counsel to
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`minimize the impact of joinder on [the Board’s] goal of securing a just, speedy, and
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`inexpensive resolution” by filing an identical petition. Qualcomm Inc., IPR2015-
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`00314, Paper 21, at 7-8 (noting a “policy preference for joining a party that does not
`
`present new issues that might complicate or delay an existing proceeding”). To the
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`extent there is any minimal impact, Congress expressly contemplated extending
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`statutory deadlines in the case of joinder. 35 U.S.C. § 316(11); see also 37 C.F.R. §
`
`42.100(c) (allowing IPRs to conclude more than one year after institution in the case
`
`of joinder).
`
`
`4 PO’s only cited law cuts against its position here. In Samsung Elecs. Co. Ltd. v.
`Immersion Corp., on a joint termination request, the panel terminated Petitioner
`Samsung only, leaving the proceeding open so that the panel could consider a
`pending motion for joinder by Motorola. Paper 19 at 4 (declining to “exercise the
`discretion afforded under 35 U.S.C. § 317(a)…to terminate these proceedings with
`respect to Patent Owner”). The panel, therefore, concluded the inequities of
`foreclosing Motorola’s joinder ability outweighed any potential delay.
`5
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`BY: /s/ Adam P. Seitz
`
`Adam P. Seitz, Reg. No. 52,206
`ERISE IP, P.A.
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`Adam.Seitz@eriseip.com
`
`Paul R. Hart (Reg. No. 59,646)
`ERISE IP, P.A.
`5299 DTC Blvd., Suite 1340
`Greenwood Village, CO 80111
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`Paul.Hart@eriseip.com
`
`COUNSEL FOR PETITIONER APPLE INC.
`
`
`
`6
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on March 14,
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`2022, the foregoing Petitioner’s Reply in Support of its’ Motion for Joinder was
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`served via electronic filing with the Board and via Electronic mail on the following
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`practitioners of record for Patent Owner:
`
`Vincent J. Rubino, III
`vrubino@fabricantllp.com
`Peter Lambrianakos
`plambrianakos@fabricantllp.com
`Alfred R. Fabricant
`ffabricant@fabricantllp.com
`Richard M. Cowell
`rcowell@fabricantllp.com
`
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`
`
`
`
`
`
`
`
`Respectfully submitted,
`BY: /s/ Adam P. Seitz
`
`
`Adam P. Seitz, Reg. No. 52,206
`
`COUNSEL FOR PETITIONER APPLE INC.
`
`7
`
`
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