`
`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
`
`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
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I. STATEMENT OF THE PRECISE RELIEF REQUESTED ................................ 1
`II. STATEMENT OF MATERIAL FACTS ............................................................... 1
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ........................... 2
`A. Legal Standard .................................................................................................... 2
`B. Petitioner’s Motion for Joinder is Timely .......................................................... 2
`C. Each Factor Weighs in Favor of Joinder ........................................................... 3
`1. Joinder is Appropriate with the Samsung IPR .................................................... 3
`2. Petitioner Proposes No New Grounds of Unpatentability .................................... 4
`3. Joinder Will Not Unduly Burden or Negatively Impact the Samsung IPR Trial
`Schedule ................................................................................................................... 4
`4. Procedures to Simplify Briefing and Discovery .................................................. 5
`IV. GENERAL PLASTIC IS INAPPLICABLE ....................................................... 7
`V. CONCLUSION ................................................................................................. 10
`
`
`
`
`
`
`ii
`
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Apple Inc. (“Petitioner”) respectfully submits this Motion for Joinder, together
`
`with a Petition for Inter Partes Review of U.S. Patent No. 9,189,787 (the “Apple
`
`Petition”) filed contemporaneously herewith. Pursuant to 35 U.S.C. § 315(c) and 37
`
`C.F.R. § 42.122(b), Petitioner requests institution of an inter partes review and joinder
`
`with the inter partes review in Samsung Electronics America, Inc. and Samsung
`
`Electronics Co., Ltd. v. RFCyber Corp., IPR2021-00980 (the “Samsung IPR”), which the
`
`Patent Trial and Appeal Board (the “Board”) instituted on December 15, 2021.
`
`Petitioner’s request for joinder is timely under 37 C.F.R. §§ 42.22 and 42.122(b) as it is
`
`submitted no later than one month after the December 15, 2021 institution date of the
`
`Samsung IPR. The Apple Petition is also narrowly tailored to the same claims, prior art,
`
`and grounds for unpatentability that are the subject of the Samsung IPR. In addition,
`
`Petitioner is willing to streamline discovery and briefing.
`
`Petitioner submits that joinder is appropriate because it will not unduly burden or
`
`prejudice the parties to the Samsung IPR while efficiently resolving the question of the
`
`’787 Patent’s validity in a single proceeding.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`1.
`
`On June 8, 2021, Samsung filed a petition for inter partes review
`
`(IPR2021-00980) requesting cancellation of claims 1-19 of the ʼ787 Patent.
`
`
`
`1
`
`
`
`2.
`
`After Samsung filed its petition, on September 7, 2021, RFCyber Corp.
`
`(“RFCyber” or “Patent Owner”) filed a civil action against Apple Inc., Case No. 6:21-cv-
`
`00916, in the U.S. District Court for the Western District of Texas.
`
`3.
`
`On December 15, 2021, the Board instituted Samsung’s petition for inter
`
`partes review on all grounds, finding that “Petitioner has demonstrated at least a
`
`reasonable likelihood of success in proving that at least one claim of the ’787 patent is
`
`unpatentable.” See IPR2021-00980, Paper 11 at 39.
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`A.
`Legal Standard
`The Board has the authority under 35 U.S.C. § 315(c) to join a properly filed inter
`
`partes review petition to an instituted inter partes review proceeding. See 35 U.S.C.
`
`§ 315(c). A motion for joinder must be filed within one month of the Board instituting an
`
`original inter partes review. 37 C.F.R. § 42.122(b). In deciding whether to exercise its
`
`discretion and permit joinder, the Board considers factors, including: (1) the reasons why
`
`joinder is appropriate; (2) whether the new petition presents any new grounds of
`
`unpatentability; (3) what impact, if any, joinder would have on the trial schedule for the
`
`existing review; and (4) how briefing and discovery may be simplified. See Kyocera
`
`Corporation v. Softview LLC, IPR2013-00004, Paper 15 at 4 (April 24, 2013).
`
`Petitioner’s Motion for Joinder is Timely
`
`B.
`This Motion for Joinder is timely because it is filed within one month of the
`
`December 15, 2021 institution decision of the Samsung IPR. 37 C.F.R. § 42.122(b).
`
`
`
`2
`
`
`
`Further, the one-year bar set forth in 37 C.F.R. § 42.101(b) does not apply to the Apple
`
`Petition because this Motion for Joinder is filed concurrently with the Apple Petition.
`
`37 C.F.R. § 42.122(b).
`
`Each Factor Weighs in Favor of Joinder
`
`C.
`Each of the four factors considered by the Board weighs in favor of joinder here.
`
`Specifically, the Apple Petition does not present any new grounds of unpatentability;
`
`rather it is substantively identical to the Samsung Petition. Further, joinder will have
`
`minimal, if any, impact on the trial schedule, as all issues are substantively identical,
`
`and Petitioner will accept an “understudy” role unless and until Samsung is terminated
`
`from the proceeding. See IPR2015-01353, Decision Instituting IPR Review, Motion for
`
`Joinder, paper 11 at 6; (granting IPR where petitioners requested an “understudy” role);
`
`see also IPR2015-01353, Motion for Joinder, paper 4 at 5-7. Lastly, the briefing and
`
`discovery will be simplified by resolving all issues in a single proceeding.
`
`Accordingly, joinder is appropriate here. See IPR2015-01353, Decision Instituting
`
`IPR Review, Motion for Joinder, paper 11 at 5-6 (granting institution of IPR and motion
`
`for joinder where petitioners relied “on the same prior art, same arguments, and same
`
`evidence, including the same expert and a substantively identical declaration.”); see also
`
`IPR2015-01353, Motion for Joinder, paper 4 at 4-5.
`
`Joinder is Appropriate with the Samsung IPR
`
`1.
`Joinder with the Samsung IPR is appropriate because the Apple Petition involves
`
`the same patent, challenges the same claims, relies on the same expert declaration, and is
`
`
`
`3
`
`
`
`based on the same grounds and combinations of prior art submitted in the Apple Petition.
`
`The Apple Petition is substantively identical to the Samsung Petition, containing only
`
`minor differences unrelated to the merits of the proposed grounds. There are no changes
`
`to the facts, citations, evidence, or arguments presented in the Samsung Petition. Because
`
`these proceedings are substantively identical, good cause exists for joining this proceeding
`
`with the Samsung IPR so that the Board can efficiently resolve all grounds in both the
`
`Apple and Samsung Petitions in a single proceeding.
`
`Petitioner Proposes No New Grounds of Unpatentability
`
`2.
`The Apple Petition does not present any new grounds of unpatentability. The Apple
`
`Petition is substantively identical to the Samsung Petition. The Apple Petition presents
`
`the unpatentability of the same claims of the same patent in the same way as the Samsung
`
`Petition.
`
`3.
`
`Joinder Will Not Unduly Burden or Negatively Impact the
`Samsung IPR Trial Schedule
`
`Because the Apple Petition is substantively identical to the Samsung Petition, with
`
`the same grounds rejecting the same claims as instituted by the Board, there are no new
`
`issues for Patent Owner to address. Due to the same issues being presented in the
`
`Samsung Petition, Patent Owner will not be required to present any additional responses
`
`or arguments. See IPR2015-01353, Decision Instituting IPR, Motion for Joinder, paper
`
`11 at 6 (granting IPR and motion for joinder where “joinder should not necessitate any
`
`additional briefing or discovery from Patent Owner beyond that already required in [the
`
`original IPR].”); see also IPR2015-01353, Motion for Joinder, paper 4 at 5-7. Further,
`
`
`4
`
`
`
`Patent Owner’s Preliminary Response already filed in the Samsung IPR addresses any
`
`and all issues in the Apple Petition, since the issues are substantively identical to the
`
`issues of the Samsung Petition. See IPR2021-00980, Patent Owner’s Preliminary
`
`Response, paper 6.
`
`The Patent Owner Response will also not be negatively impacted because the
`
`issues presented in the Samsung Petition are identical to the issues presented in the Apple
`
`Petition. Patent Owner will not be required to provide any additional analysis or
`
`arguments beyond what it will already provide in responding to the Samsung Petition.
`
`Also, because the Apple Petition relies on the same expert and a substantively identical
`
`declaration, only a single deposition is needed for the proposed joined proceeding.
`
`Joinder of this proceeding with the Samsung IPR does not unduly burden or
`
`negatively impact the trial schedule in any meaningful way. Further, even if a small
`
`adjustment of the trial schedule was necessary, this is already provided for in the rules and
`
`is a routine undertaking by parties in IPR proceedings. See 37 C.F.R. § 42.100(c). Thus, a
`
`slight adjustment in the trial schedule, should one be needed, is not enough of a reason to
`
`deny joining the present Apple Petition with the Samsung IPR.
`
`Procedures to Simplify Briefing and Discovery
`
`4.
`The Samsung Petition and Apple Petition present substantively identical grounds
`
`of rejection, including the same art combinations against the same claims. Additionally,
`
`Petitioner explicitly agrees to take an “understudy” role, as described by the Board:
`
`
`
`5
`
`
`
`“(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].”
`
`See IPR2014-00550, paper 38 at 5 (Apr. 10, 2015) (emphasis in original). Petitioner
`
`Apple will assume the primary role only if Samsung ceases to participate in the Samsung
`
`IPR. Petitioner Apple has conferred with counsel for Petitioner Samsung, and Petitioner
`
`Samsung takes no position as to Petitioner Apple joining in IPR2021-00980 in an
`
`“understudy” role.
`
`By Petitioner accepting an “understudy” role, Patent Owner and Petitioner Apple
`
`can comply with the current trial schedule and avoid any duplicative efforts by the Board
`
`or the Patent Owner. These steps will minimize any potential complications or delay that
`
`potentially may result by joinder. See IPR2015-01353, Decision Instituting IPR, paper 11
`
`at 6-7 (granting IPR and motion for joinder because “joinder would increase efficiency
`
`by eliminating duplicative filings and discovery, and would reduce costs and burdens on
`
`
`
`6
`
`
`
`the parties as well as the Board” where petitioners agreed to an “understudy” role.); see
`
`also IPR2015-01353, Motion for Joinder, paper 4 at 6-7.
`
`IV. GENERAL PLASTIC IS INAPPLICABLE
`Petitioner respectfully submits that the General Plastic analysis is inapplicable
`
`here. In General Plastic, the Board sets forth a series of factors that may be analyzed for
`
`follow-on petitions to help conserve the finite resources of the Board. In the current
`
`motion, Apple merely seeks to join Samsung’s proceeding in an understudy rule and does
`
`not present any new grounds. The PTAB has previously stated that a joinder petition
`
`“effectively neutralizes” a General Plastic analysis. See Apple Inc. v. Uniloc 2017 LLC,
`
`IPR2018-00580, Paper 13 at 10 (PTAB Aug. 21, 2018) (instituting a joinder petition,
`
`stating joinder petitioner’s joinder motion agreeing to a passive understudy role
`
`“effectively neutraliz[es] the General Plastic factors”); see also Celltrion, Inc. v.
`
`Genetech, Inc., IPR2019-01019, Paper 11 at 10 (PTAB Oct. 30, 2018) (same and noting
`
`the joinder motion “effectively obviates any concerns of serial harassment and
`
`unnecessary expenditures of resources”).
`
`In the event the Board does analyze the General Plastic factors, those factors
`
`heavily weigh in favor of instituting the present IPR and joining it with the Samsung IPR.
`
`General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, slip op. at
`
`16 (PTAB Sept. 6, 2017) (Paper 19) (precedential as to § II.B.4.i).
`
`Regarding factor 1, Apple has not previously filed a petition against the ’787 Patent.
`
`This factor weighs in favor of institution and joinder.
`
`
`
`7
`
`
`
`The second factor is whether at the time of filing the first petition the petitioner
`
`knew or should have known of the prior art asserted in the second petition. This factor is
`
`neutral, if not inapplicable, in the General Plastic analysis here. Apple’s petition and
`
`Samsung’s petition share the same prior art because Apple’s Petition is a “copycat” of
`
`Samsung’s petition. Because Apple is merely seeking to join in an understudy role, the
`
`factor is neutral, at best, in determining whether to institute and join.
`
`The third factor is whether at the time of filing of the second petition the petitioner
`
`already received the patent owner’s preliminary response to the first petition or received
`
`the Board’s decision on whether to institute review in the first petition. Because this is a
`
`motion for Joinder, Apple is submitting a substantively identical petition and has not
`
`added to, or changed, any of the substantive arguments in response to either the Patent
`
`Owner’s Preliminary Response or the Board’s Institution Decision. Moreover, because
`
`the present Petition is submitted as a joinder and Apple will serve an understudy role, the
`
`petition clearly is not an attempt to harass the Patent Owner or otherwise engage in serial,
`
`tactical filings. Thus, this factor weighs against denial of institution and joinder.
`
`The fourth factor is the length of time elapsed between the time the petitioner
`
`learned of the prior art asserted in the second petition and filing of the second petition,
`
`and the fifth factor is whether the petitioner provides adequate explanation for the time
`
`elapsed between the filings of multiple petitions directed to the same claims of the same
`
`patent. In the context of a joinder motion where Apple will be taking an understudy role,
`
`these factors are inapplicable. Apple is moving to join Samsung’s petition within the 30-
`
`
`
`8
`
`
`
`day deadline and will only serve in an understudy role with a substantively identical
`
`Petition. Thus, these two factors are inapplicable.
`
`The sixth factor is the finite resources of the Board. Allowing Apple’s joinder
`
`motion where it will serve in an understudy role will not impact the Board’s resources,
`
`beyond those resources the Board dedicates to the instant joinder motion.
`
`The seventh factor is the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`
`determination not later than 1 year after the date on which the Director notices institution
`
`of review. This factor weighs in favor of institution and joinder, as there is nothing to
`
`prevent the Board from issuing a final determination on Samsung’s petition within one
`
`year even with a joinder of Apple and its petition.
`
`An eighth factor identified by the Board in Shenzhen is the extent to which the
`
`petitioner and any prior petitioner(s) were similarly situated defendants or otherwise
`
`realized a similar-in-time hazard regarding the challenged patent. Shenzhen Silver Star
`
`Intelligent Tech. Co., Ltd. v. iRobot Corp., IPR2018-00898, Paper 9 at 7 (PTAB Oct. 1,
`
`2018). This factor also weighs in favor of institution and joinder. This is not a situation
`
`where Petitioner’s challenge to the patentability of the ’787 Patent has changed or shifted
`
`due to the prior-filed Samsung IPR. This is self-evident because this is a motion for joinder
`
`where Apple is submitting a substantively identical petition to that submitted by Samsung.
`
`Because Apple’s petition does not introduce any new grounds of unpatentability and will
`
`effectively merge into a single proceeding with Samsung’s IPR, no such tactical
`
`advantage is gained here.
`
`
`
`9
`
`
`
`Thus, none of the General Plastic factors weigh against institution and joinder in
`
`this situation.
`
`V. CONCLUSION
`Based on the factors discussed above, Petitioner Apple respectfully requests that
`
`the Board grant the Apple Petition for Inter Partes Review of U.S. Patent No. 9,189,787
`
`and then grant joinder with the Samsung Electronics America, Inc., and Samsung
`
`Electronics Co. v. RFCyber Corp., IPR2021-00980 proceeding.
`
`
`
`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.
`
`
`
`10
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a true and correct copy of the Motion for Joinder has
`
`been served on the Patent Owner via Federal Express or by means at least as fast and
`
`reliable as Federal Express on January 14, 2021, at the following address:
`
`LogicPatents, LLC
`21701 Stevens Creek Boulevard, #284
`Cupertino CA 95015
`
`Further, a courtesy copy of this Motion for Joinder was sent via Federal Express to
`
`Patent Owner’s litigation counsel:
`
`Raymond W. Mort, III, raymort@austinlaw.com
`THE MORT LAW FIRM, PLLC
`100 Congress Avenue, Suite 2000
`Austin, Texas 78701
`
`Peter Lambrianakos, plambrianakos@fabricantllp.com
`Richard M. Cowell, rcowell@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Road, Suite 206 South
`Rye, New York 10580
`
`Finally, Petitioner has sent Email to the Board and parties listed in IPR2021-00980
`
`notifying of the filing of the Motion for Joinder and Petition for Inter Partes Review as
`
`follows:
`
`Heath J. Briggs (briggsh@gtlaw.com)
`Andrew R. Sommer (sommera@gtlaw.com)
`Allan A. Kassenoff (kassenoffa@gtlaw.com)
`Jeffrey R. Colin (colinj@gtlaw.com)
`Greenberg Traurig, LLP
`1144 15th St., Suite 3300
`Denver, CO 80202
`
`
`
`11
`
`
`
`Respectfully submitted,
`BY: /s/ Adam P. Seitz
`
`
`Adam P. Seitz, Reg. No. 52,206
`
`COUNSEL FOR PETITIONER APPLE INC.
`
`
`
`12
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`
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