IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
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`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SCRAMOGE TECHNOLOGY, LTD.,
`Patent Owner
`
`__________________
`
`
`Case No. IPR2022-00573
`U.S. Patent No. 7,825,537
`
`__________________
`
`
`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, and 42.122(b)
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`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SCRAMOGE TECHNOLOGY, LTD.,
`Patent Owner
`
`__________________
`
`
`Case No. IPR2022-00573
`U.S. Patent No. 7,825,537
`
`__________________
`
`
`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, and 42.122(b)
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`Motion for Joinder
`Case No. IPR2022-00573 (U.S. Patent No. 7,825,537)
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`TABLE OF CONTENTS
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`I. STATEMENT OF PRECISE RELIEF REQUESTED ....................................... 3
`II. BACKGROUND AND RELATED PROCEEDINGS ....................................... 5
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ............................ 5
`a.
`Legal Standard ........................................................................................ 6
`b.
`Petitioner’s Motion for Joinder is Timely .............................................. 6
`c.
`The Kyocera Factors Favor Joinder ....................................................... 7
`Factor 1: Joinder is appropriate ............................................................... 7
`i.
`ii. Factor 2: Apple’s Petition proposes no new grounds of unpatentability. 9
`iii. Factor 3: Joinder will not unduly burden or negatively impact the Anker
`IPR .......................................................................................................... 9
`iv. Factor 4: Procedures to simplify briefing and discovery .......................10
`IV. CONCLUSION .................................................................................................13
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`2
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`Motion for Joinder
`Case No. IPR2022-00573 (U.S. Patent No. 7,825,537)
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`I. STATEMENT OF PRECISE RELIEF REQUESTED
`Petitioner Apple Inc. (“Apple”) respectfully submits this Motion for Joinder
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`together with a Petition for Inter Partes Review of U.S. Patent No. 7,825,537
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`(“Apple’s Petition”). On February 1, 2022, Fantasia Trading LLC d/b/a Anker
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`Innovations (“Anker”) filed Fantasia Trading LLC d/b/a Anker Innovations v.
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`Scramoge Technology, Ltd., IPR2022-00499 (“the Anker IPR”) that also
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`challenges U.S. Patent No. 7,825,537. If the Anker IPR is instituted, Apple
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`requests inter partes review and joinder with the Anker IPR pursuant to 35 U.S.C.
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`§ 315(c) and 37 C.F.R. § 42.122(b). Joinder is appropriate because Apple’s
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`Petition is substantively identical to the petition in the Anker IPR—challenging the
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`same claims of the ’537 patent on the same grounds while relying on the same
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`prior art, arguments, and evidence (i.e., Apple’s Petition is a “copycat” petition). If,
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`however, the Anker IPR is terminated prior to institution, Apple respectfully
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`requests that this motion be withdrawn and Apple’s petition be instituted against
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`the ’537 patent.
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`In making this request, Apple seeks to maximize efficiency in two ways.
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`First, by requesting joinder rather than pursuing its own standalone petition, Apple
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`seeks to reduce the number of parallel challenges to the ’537 patent pending before
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`the Board. Second, by filing this petition and motion now rather than at some later
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`date, Apple seeks to lessen the chance of duplicative efforts across multiple
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`3
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`
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`Motion for Joinder
`Case No. IPR2022-00573 (U.S. Patent No. 7,825,537)
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`forums. For example, if Apple were to wait to file a petition until either the Anker
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`IPR is terminated or denied institution, the parallel district court proceeding would
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`be further along and the potential for overlap greater. Thus, in the interest of
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`preserving the resources of the Board and parties, Apple is filing this motion for
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`joinder rather than a standalone petition, and is doing so expeditiously. See, e.g.,
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`General Plastic Indus. Co. v. Cannon Kabushiki Kaisha, IPR2016-01357, Paper 19
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`at 16 (PTAB Sept. 6, 2017) (precedential) (“In exercising discretion…we are
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`mindful of the goals of the AIA–namely, to improve patent quality and make the
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`patent system more efficient by the use of post-grant review procedures”); Apple
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`Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020)
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`(precedential) (“the Board takes a holistic view of whether efficiency and integrity
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`of the system are best served by denying or instituting review”).
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`Apple’s request for joinder is timely because it is filed even before
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`institution of the Anker IPR. If the Anker IPR is instituted and Apple is joined,
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`Apple proposes to streamline discovery and briefing by taking an “understudy
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`role.” Accordingly, joinder will not unduly burden or prejudice the parties to the
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`Anker IPR and will provide for a just, speedy, and inexpensive determination of
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`related proceedings.
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`Counsel for Apple has conferred with counsel for Anker, and Anker does not
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`oppose joinder.
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`4
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`
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`Motion for Joinder
`Case No. IPR2022-00573 (U.S. Patent No. 7,825,537)
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`II. BACKGROUND AND RELATED PROCEEDINGS
`On October 8, 2021, Scramoge Technology Ltd.—the purported
`1.
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`Patent Owner—filed a complaint asserting the ’537 patent against Anker in the
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`U.S. District Court for the Central District of California (Case No. 5:21-cv-01712).
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`2.
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`On October 14, 2021, Scramoge filed a complaint asserting the ’537
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`patent against Apple in the U.S. District Court for the Western District of Texas
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`(Case No. 6:21-cv-01071).
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`3.
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`Scramoge has also asserted the ’537 patent against Google LLC in
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`6:21-cv-01138 (W.D. Tex.) based on a complaint filed November 4, 2021; against
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`Belkin International, Inc. in 2:21-cv-08035 (C.D. Cal.) based on a complaint filed
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`October 8, 2021; against Mophie, Inc. in 2:21-cv-08004 (C.D. Cal.) and 8:21-cv-
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`01673 (C.D. Cal.) based on complaints filed October 7, 2021; and against Samsung
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`Electronics Co., Ltd. in 6:21-cv-00902 (W.D. Tex.) based on a complaint filed
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`August 30, 2021.
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`4.
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`On February 1, 2022, Anker timely filed a Petition for Inter Partes
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`Review challenging claims 1-22 and 28 of the ’537 patent (“Anker’s Petition”).
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`See Fantasia Trading, LLC d/b/a Anker Innovations v. Scramoge Technology Ltd.,
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`IPR2022-00499, (PTAB Feb 1, 2022).
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
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`5
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`
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`Motion for Joinder
`Case No. IPR2022-00573 (U.S. Patent No. 7,825,537)
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`As explained in detail below, if the Anker IPR is instituted, Apple’s motion
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`for joinder should be granted because the motion is timely, and the Kyocera factors
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`favor joinder.
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`a. Legal Standard
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`The Board may join as a party to an instituted inter partes review a person
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`who has properly filed a petition for inter partes review that warrants institution.
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`35 U.S.C. § 315(c). Any request for joinder must be filed “no later than one month
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`after the institution date of any inter partes review for which joinder is requested.”
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`37 C.F.R. § 42.122(b). A petition for inter partes review is not subject to the one-
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`year statutory time bar if the petition is accompanied by a request for joinder. 35
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`U.S.C. § 315(b); 37 C.F.R. § 42.122(b).
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`“A motion for joinder should (1) set forth reasons why joinder is
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`appropriate; (2) identify any new grounds of unpatentability asserted in the
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`petition; (3) explain what impact (if any) joinder would have on the trial schedule
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`for the existing review; and (4) address specifically how briefing and discovery
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`may be simplified.” Samsung Elecs., Co. v. Raytheon Co., IPR2016-00962, Paper
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`12 at 5 (PTAB Aug. 24, 2016) (citing Kyocera Corp. v. Softview LLC, IPR2013-
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`00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).
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`b. Petitioner’s Motion for Joinder is Timely
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`6
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`
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`Motion for Joinder
`Case No. IPR2022-00573 (U.S. Patent No. 7,825,537)
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`Apple’s Motion for Joinder is timely because it is being filed pre-institution
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`and is thus no later than one month after an institution decision is due by the Board
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`in the Anker IPR. See 37 C.F.R. § 42.122(b).
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`c. The Kyocera Factors Favor Joinder
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`i. Factor 1: Joinder is appropriate
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`If instituted, joinder with the Anker IPR would be appropriate because
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`Apple’s Petition involves the same patent, challenges the same claims, and is based
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`on the same grounds and same technical expert declaration testimony relied upon
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`in Anker’s Petition. In short, Apple’s Petition is substantively identical to the
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`Anker IPR with respect to the prior art challenges. Only minor changes were
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`necessary to properly identify the filing party and to update the Fintiv analysis in
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`light of the different circumstances of Apple’s parallel district court proceeding.1
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`As such, Apple’s Petition does “not present issues that might complicate or delay”
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`the existing Anker IPR. See Enzymotec Ltd. v. Neptune Techs & Bioresources,
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`Inc., IPR2014-00556, Paper 19 at 6 (July 9, 2014) (“we are mindful of a policy
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`preference for joining a party that does not present new issues that might
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`complicate or delay an existing proceeding”). Joinder would have little, if any,
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`impact on the Anker IPR because no new grounds would be added, the schedule
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`1 See Section V.B of Apple’s Petition
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`7
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`Motion for Joinder
`Case No. IPR2022-00573 (U.S. Patent No. 7,825,537)
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`would not be affected, no additional briefing or discovery would be required, and
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`no additional burdens would be placed on Patent Owner, as detailed below.
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`Additionally, Apple is currently involved in litigation based on Patent
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`Owner’s allegation that Apple’s products infringe the ʼ537 patent. Apple therefore
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`has a particular interest in the substantial questions of invalidity surrounding the
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`ʼ537 patent. If Anker’s Petition (and Apple’s Petition) is instituted, joinder would
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`be appropriate for the additional reason that the invalidity grounds as to the
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`challenged claims can be resolved through Apple’s continued participation in the
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`IPR process, even if the original petitioner in IPR2022-00499 were to reach a
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`settlement with Patent Owner, or otherwise cease active participation in that
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`instituted proceeding. The public interest in “permitting full and free competition
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`in the use of ideas which are in reality a part of the public domain” Lear, Inc. v.
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`Adkins, 395 U.S. 653, 670 (1969), favors allowing joinder in this case, as joinder
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`would allow Apple to continue participating in the IPR process if Anker ceases
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`active participation. In that regard, Apple is filing this petition and joinder motion
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`so that regardless of whether Anker terminates or ceases participation in its IPR
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`proceeding—either before or after institution—inter partes review of the ’537
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`patent may proceed in due course.
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`8
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`Motion for Joinder
`Case No. IPR2022-00573 (U.S. Patent No. 7,825,537)
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`Accordingly, joinder is appropriate because it eliminates the possibility of
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`duplicate efforts and ensures a just, speedy, and inexpensive resolution of these
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`proceedings.
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`ii. Factor 2: Apple’s Petition proposes no new grounds of
`unpatentability
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`Apple’s Petition does not present any new grounds or arguments regarding
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`unpatentability. It is substantively identical to Anker’s Petition in that regard. The
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`Board “routinely grants motions for joinder where the party seeking joinder
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`introduces identical arguments and the same grounds raised in the existing
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`proceeding.” BlackBerry Corp. v. Uniloc 2017 LLC, IPR2019-01283, Paper 10 at 8
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`(PTAB Nov. 5, 2019) (quoting Samsung, IPR2016-00962, Paper 12 at 9)
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`(emphasis added). This factor therefore favors joinder.
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`iii. Factor 3: Joinder will not unduly burden or negatively
`impact the Anker IPR
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`Joinder will not unduly burden Patent Owner. Because Apple’s Petition
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`presents the same grounds and arguments as Anker’s Petition, there would be no
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`new issues for Patent Owner to address post institution. See Sony Corp. v. Memory
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`Integrity, LLC, IPR2015-01353, Paper 11 at 6 (PTAB Oct. 15, 2015) (granting
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`motion for joinder and instituting IPR where “joinder should not necessitate any
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`additional briefing or discovery from Patent Owner beyond that already required in
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`[the original IPR]”).
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`9
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`Motion for Joinder
`Case No. IPR2022-00573 (U.S. Patent No. 7,825,537)
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`Likewise, joinder will not negatively impact the trial schedule of the Anker
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`IPR, if instituted. If Anker’s petition is instituted, and joinder of Apple is granted,
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`Apple expressly consents to the trial schedule issued in the Anker IPR. Further, as
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`described below, Apple agrees to take an “understudy” role in the joined
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`proceeding, so long as Anker remains an active party in the joined proceeding.
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`Finally, Apple’s Petition relies on the same technical expert and identical
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`declaration. See EX1003 (Decl. of Thomas Szepesi, Ph.D).
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`iv. Factor 4: Procedures to simplify briefing and discovery
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`In the event the Anker IPR is instituted and Apple is joined, Apple agrees to
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`take an “understudy” role in the joined proceeding, so long as Anker remains a
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`party and active participant in the proceeding. See, e.g., Apple Inc. v. INVT SPE
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`LLC, IPR2019-00958, Paper 9 at 6-8 (PTAB May 30, 2019) (granting motion for
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`joinder where the movant presented a substantively identical petition and agreed to
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`take an “understudy” role in the joined proceeding); Intel Corp. v. Alacritech, Inc.,
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`IPR2018-01352, Paper 11 at 3–5 (PTAB Jan. 8, 2019) (same). To be clear, Apple
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`only contemplates assuming the role of primary petitioner in the instituted Anker
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`IPR if (i) Anker is terminated as a party to the proceeding, or (ii) Anker ceases
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`participating in the proceeding such that the proceeding is no longer “meaningfully
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`adversarial,” contrary to the public interest. See ZTE (USA), Inc., et al. v. CyWee
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`Group Ltd., IPR2019-00143, Paper 50 at 7-9 (PTAB July 17, 2020) (allowing a
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`10
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`Motion for Joinder
`Case No. IPR2022-00573 (U.S. Patent No. 7,825,537)
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`joinder petitioner to assume the role of primary petitioner with respect to a motion
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`to amend because the “trial no longer appears to be meaningfully adversarial”
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`given the primary petitioner’s decision not to oppose revised amended claims).
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`As an understudy in the Anker IPR, Apple agrees to the following conditions
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`regarding the joined proceeding, so long as Anker remains an active party in the
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`joined proceeding:
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`• All filings by Apple in the joined proceeding shall be consolidated with the
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`filings of Anker unless a filing solely concerns issues that do not involve
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`Anker2;
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`• Apple shall not be permitted to raise any new grounds not already instituted
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`by the Board in the Anker IPR, or introduce any argument or discovery not
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`already introduced by Anker;
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`• Apple shall be bound by any agreement between Patent Owner and Anker
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`concerning discovery and/or depositions; and
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`• At deposition, Apple shall not receive any direct examination, cross-
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`2 Any consolidated filings jointly submitted by petitioners will not exceed the
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`normal page limits for a single party set forth in the rules. Circumstances may
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`require Apple to request and file separate papers with respect to Apple’s individual
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`status as petitioner in the proceeding—e.g., a motion to terminate.
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`11
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`
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`Motion for Joinder
`Case No. IPR2022-00573 (U.S. Patent No. 7,825,537)
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`examination, or redirect time beyond that permitted in this proceeding for
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`Anker alone under either 37 C.F.R. § 42.53 or any agreement between
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`Patent Owner and Anker.
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`See Apple, IPR2019-00958, Paper 9 at 7–8 (granting a motion for joinder where
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`the movant proposed the above limitations on its role as understudy); see also Intel
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`Corp., IPR2018-01352, Paper 11 at 4–5 (granting a motion for joinder with such
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`limitations on the understudy).
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`Additionally, with respect to any oral hearing, Anker will be responsible for
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`the presentation before the Board. Apple, when in the understudy role, will not
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`request any additional time to independently argue before the Board or attempt to
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`submit its own demonstratives.3
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`Accordingly, if joinder is granted, briefing and discovery in the joined
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`proceeding will be no more complex than if Apple had never been joined.
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`Consolidated briefing and discovery will ensure a simplified and efficient joined
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`proceeding. As such, this factor also favors joinder.
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`
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`3 While Apple will not materially participate in calls with the Board, depositions,
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`and any oral hearing, Apple anticipates that its counsel will attend such events.
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`Additionally, Apple’s understudy role does not foreclose communication between
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`Apple and other petitioners in the Anker IPR.
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`12
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`Motion for Joinder
`Case No. IPR2022-00573 (U.S. Patent No. 7,825,537)
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`IV. CONCLUSION
`For the reasons above, Apple respectfully requests that the Board (i) institute
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`Apple’s concurrently filed Petition for Inter Partes Review of U.S. Patent No.
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`7,825,537; and (ii) if the Anker IPR is instituted, grant joinder.
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`Dated: February 10, 2022
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
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`Customer No. 27683
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`Respectfully submitted,
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`/Scott T. Jarratt/
`Scott T. Jarratt
`Lead Counsel for Petitioner
`Registration No. 70,297
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`13
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`Motion for Joinder
`Case No. IPR2022-00573 (U.S. Patent No. 7,825,537)
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that, in accordance with 37 C.F.R. § 42.6(e) and
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`37 C.F.R. § 42.105, service was made on Patent Owner as detailed below.
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`Date of service February 10, 2022
`Manner of service FEDERAL EXPRESS
`Documents served PETITIONER’S MOTION FOR JOINDER UNDER 35
`U.S.C. § 315(c), 37 C.F.R. §§ 42.22, and 42.122(b).
`HARRIS CORPORATION
`C/O FOX ROTHSCHILD, LLP
`997 Lenox Drive
`Building 3
`Lawrenceville NJ 08543-5231
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`Persons served
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`/Scott T. Jarratt/
`Scott T. Jarratt
`Lead Counsel for Petitioner
`Registration No. 70,297
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