`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`RFCYBER CORP.,
`
`Patent Owner.
`
`
`Patent No. 9,240,009
`Filing Date: January 16, 2012
`Issue Date: January 19, 2016
`
`Inventors: Liang Seng Koh, Hsin Pan, and Xiangzhen Xie
`Title: MOBILE DEVICES FOR COMMERCE OVER
`UNSECURED NETWORKS
`
`__________________________________________________________________
`
`RFCYBER CORP.’S
`RESPONSE TO 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 IPR2021-00981
`
`Case No. IPR2022-00413
`__________________________________________________________________
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`IPR2022-00413
`PATENT NO. 9,240,009
`
`Page(s)
`
`
`I.
`INTRODUCTION ........................................................................................... 1
`STATEMENT OF ADDITIONAL MATERIAL FACTS .............................. 2
`II.
`III. ARGUMENT ................................................................................................... 2
`A.
`Legal Standard ....................................................................................... 2
`B.
`The Samsung IPR Will Terminate Before This Proceeding is
`Instituted, and Therefore There Will Be No Proceeding for
`Apple to Join ......................................................................................... 3
`Apple’s Petition Does Not Warrant Institution ..................................... 5
`C.
`D. Granting Joinder Would Burden and Negatively Impact the
`Samsung IPR Trial Schedule................................................................. 5
`IV. CONCLUSION ................................................................................................ 7
`
`
`
`
`i
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`IPR2022-00413
`PATENT NO. 9,240,009
`
` Page(s)
`
`Cases
`Aerohive Networks, Inc. v. Chrimar Sys., Inc.,
`IPR2016-01757, Paper 11 (P.T.A.B. Feb. 3, 2017) .............................................. 5
`Aerohive Networks, Inc. v. Chrimar Sys., Inc.,
`IPR2016-01757, Paper 3 (P.T.A.B. Sep. 8, 2016) ................................................ 5
`Dell Inc. v. Chrimar Sys., Inc.,
`IPR2016-00569, Paper 40 (P.T.A.B. Jan. 20, 2017) ............................................ 5
`Dell, Inc. v. Network-1 Sec. Sols., Inc.,
`IPR2013-00385, Paper 17, 6 (P.T.A.B. July 29, 2013) ........................................ 3
`Facebook, Inc. v. Windy City Innovations, LLC,
`973 F.3d 1321 (Fed. Cir. 2020) ........................................................................ 2, 5
`Kyocera Corporation v. Softview LLC,
`IPR2013-00004, Paper 15 (P.T.A.B. April 24, 2013) .......................................... 6
`LG Elecs., Inc. v. Bell N. Research, LLC,
`Case No. IPR2020-00108, Paper 14 (P.T.A.B. May 20, 2020)............................ 4
`Mylan Techs., Inc. v. MonoSol Rx, LLC,
`IPR2017-00200, Paper 22 (P.T.A.B. Oct. 5, 2017) .............................................. 4
`Mylan Techs., Inc. v. MonoSol Rx, LLC,
`IPR2017-00200, Paper 23 (P.T.A.B. Oct. 6, 2017) .............................................. 4
`Par Pharm., Inc. v. MonoSol Rx, LLC,
`IPR2017-01557, Paper 4 (P.T.A.B. June 9, 2017) ............................................... 4
`Samsung Elecs. Co. Ltd. v. Immersion Corp.,
`IPR2018-01467, Paper 19 (P.T.A.B. June 18, 2019) ........................................... 6
`Sony Corp. of Am. v. Network-1 Sec. Sols., Inc.,
`IPR2013-00386, Paper 16, 3 (P.T.A.B. Jul. 29, 2013) ......................................... 2
`
`i
`
`
`
`IPR2022-00413
`PATENT NO. 9,240,009
`
`
`ZTE (USA) LLC v. Seven Networks, LLC,
`IPR2019-00460, Paper 18, 5 (P.T.A.B. Jun. 6, 2019) ...................................... 5, 6
`Statutes
`35 U.S.C. § 317(a) ............................................................................................. 1, 3, 5
`
`
`
`ii
`
`
`
`IPR2022-00413
`PATENT NO. 9,240,009
`
`EXHIBITS
`
`Description of Document
`
`Joint Motion to Stay All Deadlines and Notice of Settlement (Dkt.
`263) in RFCyber Corp. v. Google LLC, Case No. 2:20-cv-00274-
`JRG (Lead Case) (E.D. Tex.), dated February 10, 2022
`
`Order (Dkt. 264) in RFCyber Corp. v. Google LLC, Case No. 2:20-
`cv-00274-JRG (Lead Case) (E.D. Tex.), dated February 11, 2022
`
`
`
`
`
`
`
`
`Exhibit
`No.
`2001
`
`2002
`
`i
`
`
`
`INTRODUCTION
`On January 14, 2022, Petitioner Apple, Inc. (“Apple” or “Petitioner”) filed a
`
`IPR2022-00413
`PATENT NO. 9,240,009
`
`
`I.
`
`
`Petition for Inter Partes Review (Paper 1, “Petition”) against U.S. Patent No.
`
`9,240,009 (Ex. 1001, “the ’009 Patent”). At the same time, Apple filed a “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 IPR2021-00981” seeking to join IPR2021-00981 (the
`
`“Samsung IPR”). Paper No. 3 (“Motion”). Since Apple filed its Motion, however,
`
`Samsung and RFCyber have reached a settlement in principle in the Samsung Case1
`
`and will soon file a motion to terminate the Samsung IPR. Under 35 U.S.C. §317(a),
`
`“An inter partes review . . . shall be terminated with respect to any petitioner upon
`
`the joint request of the petitioner and the patent owner, unless the Office has decided
`
`the merits of the proceeding before the request for termination is filed.”
`
`Accordingly, there will be no proceeding for Apple to join, and thus Apple’s Motion
`
`must be denied.
`
`
`
`However, even if the Board determines to take up Apple’s Motion prior to
`
`terminating the Samsung IPR, it should still deny joinder. First, Apple’s Petition
`
`
`1 RFCyber Corp. v. Google LLC, 2:20-cv-00274-JRG (Lead Case) (E.D. Tex.),
`
`RFCyber Corp. v. Samsung Elecs. Co., Ltd., 2:20-cv-00335 (Member Case) (E.D.
`
`Tex.) (the “Samsung Case”).
`
`1
`
`
`
`
`does not warrant institution under §314, as RFCyber will show in its Patent Owner
`
`IPR2022-00413
`PATENT NO. 9,240,009
`
`Preliminary Response, due April 26, 2022. See Paper 4 at 1. Second, as discussed
`
`below, the Board should exercise its discretion and determine not to join Apple as a
`
`party because joining Apple would significantly disrupt the trial schedule.
`
`II.
`
`STATEMENT OF ADDITIONAL MATERIAL FACTS
`RFCyber and Samsung reached an agreement in which “All matters in
`1.
`
`controversy between the Parties have been settled in principle” on February 10,
`
`2022. Ex. 2001.
`
`2.
`
`On February 11, 2022, the District Court ordered the Samsung Case
`
`stayed for 30 days to allow Samsung and RFCyber to submit dismissal papers. Ex.
`
`2002.
`
`III. ARGUMENT
`A. Legal Standard
`“To join a party to an instituted IPR, the plain language of § 315(c) requires
`
`
`
`two different decisions.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d
`
`1321, 1332 (Fed. Cir. 2020). The first decision is “whether the joinder applicant’s
`
`petition for IPR ‘warrants’ institution under § 314.” The second is “whether to ‘join
`
`as a party’ the joinder applicant.” Id. “Joinder may be authorized when warranted,
`
`but the decision to grant joinder is discretionary.” Sony Corp. of Am. v. Network-1
`
`Sec. Sols., Inc., IPR2013-00386, Paper 16, 3 (P.T.A.B. Jul. 29, 2013). “The fact that
`
`2
`
`
`
`
`the [Director or his delegate the] Board has the discretion to join a party does not
`
`IPR2022-00413
`PATENT NO. 9,240,009
`
`mean that joinder is automatic, particularly given the need to complete proceedings
`
`in a just, speedy, and inexpensive manner.” Dell, Inc. v. Network-1 Sec. Sols., Inc.,
`
`IPR2013-00385, Paper 17, 6 (P.T.A.B. July 29, 2013).
`
`
`
`Under 35 U.S.C. § 317(a) “An inter partes review instituted under this chapter
`
`shall be terminated with respect to any petitioner upon the joint request of the
`
`petitioner and the patent owner, unless the Office has decided the merits of the
`
`proceeding before the request for termination is filed.” Further, “[i]f no petitioner
`
`remains in the inter partes review, the Office may terminate the review or proceed
`
`to a final written decision under section 318(a).” Id.
`
`
`
`The Board has recognized that “There are strong public policy reasons to favor
`
`settlement between the parties to a proceeding.” PTAB Trial Practice Guide (“TPG”)
`
`at 86 (Nov. 2019 Rev.). Indeed, “The Board expects that a proceeding will terminate
`
`after the filing of a settlement agreement, unless the Board has already decided the
`
`merits of the proceeding.” Id. (citing 35 U.S.C. § 317(a)).
`
`B.
`
`The Samsung IPR Will Terminate Before This Proceeding is
`Instituted, and Therefore There Will Be No Proceeding for Apple
`to Join
`On February 10, 2022, Samsung and RFCyber reached a settlement in
`
`principle in the Samsung Case and filed a notice so informing the District Court. Ex.
`
`2001. The District Court stayed the Samsung Case on February 11 for 30 days to
`
`3
`
`
`
`
`allow Samsung and RFCyber to finalize their agreement and file dismissal papers.
`
`IPR2022-00413
`PATENT NO. 9,240,009
`
`Once Samsung and RFCyber finalize their agreement, they will request
`
`authorization to file a corresponding motion to terminate the Samsung IPR. If
`
`terminated, the Samsung IPR cannot serve as a proceeding to which this IPR may
`
`be joined. See, e.g., LG Elecs., Inc. v. Bell N. Research, LLC, Case No. IPR2020-
`
`00108, Paper 14 (P.T.A.B. May 20, 2020) (denying motion for joinder after original
`
`proceeding was terminated).
`
`Section 317 requires the Board to terminate the Samsung IPR upon the request
`
`of the parties. The Samsung IPR was instituted on December 15, 2021. Motion at
`
`2. The Board thus will not reach a decision on the merits until at least December
`
`2022. The Motion to Terminate will be filed in the near future; indeed, it will be
`
`filed long before Patent Owner’s Preliminary Response is due in April 2022. Thus,
`
`the statute and the Board’s procedures require the Board to terminate the Samsung
`
`IPR. The Board has done so in other cases, despite a pending motion for joinder.
`
`For example, in Mylan Techs., Inc. v. MonoSol Rx, LLC, IPR2017-00200, Paper 23
`
`(P.T.A.B. Oct. 6, 2017), the Board terminated the proceeding despite a pending
`
`joinder request by a petitioner in Par Pharm., Inc. v. MonoSol Rx, LLC, IPR2017-
`
`01557, Paper 4 (P.T.A.B. June 9, 2017). The Board further denied Par’s request to
`
`have its petition and motion for joinder decided before the Board decided whether
`
`to terminate. Mylan, IPR2017-00200, Paper 22 at 2 (P.T.A.B. Oct. 5, 2017).
`
`4
`
`
`
`
`Similarly, in Dell Inc. v. Chrimar Sys., Inc., IPR2016-00569, Paper 40 (P.T.A.B.
`
`IPR2022-00413
`PATENT NO. 9,240,009
`
`Jan. 20, 2017), the Board also fully terminated despite the pending joinder request
`
`in Aerohive Networks, Inc. v. Chrimar Sys., Inc., IPR2016-01757, Paper 3 (P.T.A.B.
`
`Sep. 8, 2016). The Board then denied the request for joinder in Aerohive, IPR2016-
`
`01757, Paper 11 (P.T.A.B. Feb. 3, 2017).
`
`
`
`Accordingly, since the Samsung IPR will be (and should be) terminated under
`
`§317(a), there will be no proceeding for Apple to join, and its Motion should be
`
`denied. ZTE (USA) LLC v. Seven Networks, LLC, IPR2019-00460, Paper 18, 5
`
`(P.T.A.B. Jun. 6, 2019) (“Given that the Samsung IPR is no longer pending, it cannot
`
`serve as a proceeding to which this proceeding may be joined.”).
`
`C. Apple’s Petition Does Not Warrant Institution
`RFCyber is preparing its Patent Owner Preliminary Response which will
`
`explain why Apple’s Petition does not warrant institution. A Petition that does not
`
`warrant institution cannot join another proceeding. Facebook, 973 F.3d at 1332
`
`(“The statute makes clear that the joinder decision is made after a determination that
`
`a petition warrants institution, thereby affecting the manner in which an IPR will
`
`proceed.”).
`
`D. Granting Joinder Would Burden and Negatively Impact the
`Samsung IPR Trial Schedule
`The Samsung IPR will suffer an unduly long delay if the Board chooses to
`
`
`
`terminate Samsung but nevertheless maintains the Samsung IPR. Patent Owner
`
`5
`
`
`
`
`discovery has just begun and has stalled in view of the pending settlement between
`
`IPR2022-00413
`PATENT NO. 9,240,009
`
`Samsung and RFCyber. Joining these proceedings will undoubtedly require a new
`
`scheduling order and thus disrupt the Samsung IPR schedule.
`
`Indeed, in situations where the original parties request termination of a
`
`proceeding after new petitioners file motions for joinder, the Board often terminates
`
`only the petitioner and vacates the scheduling order in the original proceeding
`
`because “no petitioner remains.” See, e.g., Samsung Elecs. Co. Ltd. v. Immersion
`
`Corp., IPR2018-01467, paper 19 (P.T.A.B. June 18, 2019). This effectively stays
`
`the original proceeding, giving the Board time to decide whether to institute and join
`
`a subsequent, identical petition. Id. Doing so here would obviously disrupt the
`
`schedule in the Samsung IPR which weighs against joinder. Kyocera Corporation
`
`v. Softview LLC, IPR2013-00004, Paper 15 at 4 (P.T.A.B. April 24, 2013).
`
`
`
`RFCyber’s Preliminary Response in this proceeding is due on April 26, 2022.
`
`“Generally, we decide whether joinder is appropriate ‘after receiving a preliminary
`
`response under section 313,’ when we determine whether institution of an inter
`
`partes review is warranted.” ZTE, IPR2019-00460, Paper 18, 7. The Board often
`
`takes up to three months to issue an institution decision; thus an institution decision
`
`may not issue until July 2022. The resulting delay in the Samsung IPR would
`
`prevent the Board from concluding the proceeding within one year of institution.
`
`6
`
`
`
`If joinder is granted now, a new scheduling order will be required, delaying
`
`IPR2022-00413
`PATENT NO. 9,240,009
`
`
`
`Patent Owner’s vindication of its rights far beyond the statutory deadlines.
`
`Accordingly, the key factor of whether joinder will impact the trial schedule weighs
`
`heavily against granting Apple’s Motion. Id., Paper 18, 7-8.
`
`IV. CONCLUSION
`
`The statute, the Board’s Rules, practical factors, and simple equity all favor
`
`denying Apple’s Motion. Accordingly, the Board should deny Apple’s Motion and
`
`dismiss its Petition.
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`Dated: February 14, 2022
`
`By:
`
`
`
`/
`/Vincent J. Rubino, III
`
`
`Vincent J. Rubino, III (Reg. No. 68,594)
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Tel. 212-257-5797
`Fax. 212-257-5796
`Email: vrubino@fabricantllp.com
`
`7
`
`
`
`
`
`CERTIFICATE OF SERVICE
`A copy of RFCYBER CORP.’S RESPONSE TO MOTION FOR
`
`IPR2022-00413
`PATENT NO. 9,240,009
`
`JOINDER UNDER 35 U.S.C. § 315(c) and 37 C.F.R. § 42.22 and 42.122(b) TO
`
`RELATED INTER PARTES REVIEW IPR2021-00981 and Exhibits 2001-2002
`
`have been served on Petitioner’s counsel of record as follows:
`
`Adam P. Seitz
`Email: Adam.Seitz@eriseip.com
`ERISE IP, P.A.
`7015 College Boulevard, Suite 700
`Overland Park, KS 66211
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`
`Paul R. Hart
`Email: Paul.Hart@eriseip.com
`ERISE IP, P.A.
`5600 Greenwood Plaza Boulevard, Suite 200
`Greenwood Village, CO 80111
`Telephone: (913) 777-5601
`
`Attorneys for Apple Inc.
`
`
`
`February 14, 2022
`
`
`
`By:
`
`/
`
`/Vincent J. Rubino, III
`Vincent J. Rubino, III (Reg. No. 68,294)
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Tel. 212-257-5797
`Fax. 212-257-5796
`
`
`
`
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