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