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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FANTASIA TRADING LLC D/B/A/ ANKERDIRECT,
`Petitioners
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`v.
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`SCRAMOGE TECHNOLOGY, LTD.,
`Patent Owner
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`Case IPR2022-00595
`Patent 10,193,392
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`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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`Proceeding No. IPR2022-00595
`Attorney Docket No: 46570-0004IP1
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`TABLE OF CONTENTS
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`I.
`II.
`III.
`a.
`b.
`i.
`ii.
`iii.
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`STATEMENT OF PRECISE RELIEF REQUESTED ................................... 1
`BACKGROUND AND RELATED PROCEEDINGS ................................... 3
`STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 4
`Legal Standard ................................................................................................. 4
`Anker’s Motion for Joinder is Timely ............................................................. 5
`Factor 1: Joinder is appropriate ....................................................................... 5
`Factor 2: Anker’s Petition proposes no new grounds of unpatentability ........ 7
`Factor 3: Joinder will not unduly burden or negatively impact the Apple IPR
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`Factor 4: Procedures to simplify briefing and discovery ................................. 9
`iv.
`IV. CONCLUSION .............................................................................................. 12
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`i
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`I. STATEMENT OF PRECISE RELIEF REQUESTED
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`Proceeding No. IPR2022-00595
`Attorney Docket No: 46570-0004IP1
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`Petitioner Fantasia Trading LLC d/b/a Ankerdirect (“Anker”)
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`respectfully submits this Motion for Joinder together with a Petition for Inter
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`Partes Review in IPR2022-00595 (“Anker’s Petition”) challenging U.S. Patent
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`No. 10,193,392 (“the ’392 patent”). On February 2, 2022, Apple Inc. (“Apple”)
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`filed an earlier petition in IPR2022-00529 (“the Apple IPR”) that also
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`challenges the ’392 patent. Counsel for Anker conferred with counsel for
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`Apple, and Apple does not oppose joinder.
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`As such, if the Apple IPR is instituted, Anker requests inter partes review
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`and joinder with the Apple IPR pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §
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`42.122(b). Joinder is appropriate because Anker’s Petition is substantively
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`identical to the petition in the Apple IPR—challenging the same claims of the
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`’392 patent on the same grounds while relying on the same prior art, arguments,
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`and evidence (i.e., Anker’s Petition is a “copycat” petition). If, however, the
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`Apple IPR is terminated prior to institution, Anker respectfully requests that
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`this motion be withdrawn and Anker’s petition be instituted against the ’392
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`patent.
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`Anker is filing this motion for joinder rather than a standalone petition,
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`and is doing so expeditiously. See, e.g., General Plastic Indus. Co. v. Cannon
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`1
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`Kabushiki Kaisha, IPR2016-01357, Paper 19 at 16 (PTAB Sept. 6, 2017)
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`Proceeding No. IPR2022-00595
`Attorney Docket No: 46570-0004IP1
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`(precedential) (“In exercising discretion…we are mindful of the goals of the
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`AIA–namely, to improve patent quality and make the patent system more
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`efficient by the use of post-grant review procedures”); Apple Inc. v. Fintiv, Inc.,
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`IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“the
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`Board takes a holistic view of whether efficiency and integrity of the system are
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`best served by denying or instituting review”). Anker’s request here will
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`increase efficiency in at least two ways. First, Anker will reduce the number of
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`distinct, parallel challenges to the ’392 patent at the PTAB because Anker is
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`requesting joinder rather than pursuing its own standalone petition. Second,
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`Anker is filing its copycat petition and motion to join soon after Apple’s earlier
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`petition was filed—not delaying until after an institution decision or termination
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`in Apple’s IPR—thereby simplifying the schedule between the two IPRs and
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`reducing the likelihood of duplicative efforts across multiple forums.
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`Finally, not only is Anker’s request for joinder timely (filed long before
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`institution of the Apple IPR), but Anker is committed to promoting efficiency
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`in discovery and briefing by taking an “understudy role.” Thus, joining
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`Anker’s IPR with the Apple’s earlier case no. IPR2022-00529 will not unduly
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`burden or prejudice Patent Owner or Apple. Instead, it will accomplish the
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`2
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`goals of 35 U.S.C. § 315(c) while also achieving for a just, speedy, and
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`Proceeding No. IPR2022-00595
`Attorney Docket No: 46570-0004IP1
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`inexpensive determination of related proceedings.
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`II. BACKGROUND AND RELATED PROCEEDINGS
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`1.
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`On October 8, 2021, Scramoge Technology Ltd.—the
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`purported Patent Owner—filed a complaint asserting the ’392 patent against
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`Anker in the U.S. District Court for the Central District of California (Case
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`No. 5:21-cv-01712).
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`2.
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`On October 14, 2021, Scramoge filed a complaint asserting the
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`’392 patent against Apple in the U.S. District Court for the Western District of
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`Texas (Case No. 6:21-cv-01071).
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`3.
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`On January 28, 2022, Scramoge served infringement contentions
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`upon Apple in the Western District of Texas, but the litigation in the Central
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`District of California is on a different schedule. To date, Scramoge has not yet
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`served infringement contentions upon Anker.
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`4.
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`On February 2, 2022, Apple timely filed a Petition for Inter Partes
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`Review challenging claims 1-8 of the ’392 patent (“Apple’s Petition”). See
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`Apple Inc. v. Scramoge Technology Ltd., IPR2022-00529, Paper 2 (PTAB Feb.
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`2, 2022).
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`3
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`Proceeding No. IPR2022-00595
`Attorney Docket No: 46570-0004IP1
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`Anker’s present Petition for IPR challenges the same claims of the
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`5.
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`’392 patent using the same grounds as Apple’s Petition in case no. IPR2022-
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`00529—a including citing to the same expert testimony and evidence
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`supporting those grounds. As such, Anker’s present Petition is substantively
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`identical as to those grounds, and presents no new issues.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
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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
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`person who has properly filed a petition for inter partes review that warrants
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`institution. 35 U.S.C. § 315(c). Any request for joinder must be filed “no later
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`than one month after the institution date of any inter partes review for which
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`joinder is requested.” 37 C.F.R. § 42.122(b). A petition for inter partes review
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`is not subject to the one- year statutory time bar if the petition is accompanied
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`by a request for joinder. 35 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
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`schedule for the existing review; and (4) address specifically how briefing and
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`discovery may be simplified.” Samsung Elecs., Co. v. Raytheon Co., IPR2016-
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`4
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`00962, Paper 12 at 5 (PTAB Aug. 24, 2016) (citing Kyocera Corp. v. Softview
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`Proceeding No. IPR2022-00595
`Attorney Docket No: 46570-0004IP1
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`LLC, IPR2013- 00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).
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`For the reasons detailed below, the Kyocera factors here favor joinder
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`after the Apple IPR is instituted.
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`b. Anker’s Motion for Joinder is Timely
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`Anker’s Motion for Joinder is timely because it is being filed pre-
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`institution—long before the due date of one month after an institution decision
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`in the Apple 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 Apple IPR would be appropriate because
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`Anker’s Petition involves the same patent, challenges the same claims, and is
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`based on the same grounds and same technical expert declaration testimony
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`relied upon in Apple’s Petition. Here, Anker’s Petition is substantively identical
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`to the Anker IPR regarding the challenged claims, the prior art grounds, and the
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`cited evidence. Only minor changes were necessary to properly identify the
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`filing party and to update the discretionary considerations (e.g., the Fintiv
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`Factors, etc. in Section X of the Petition) resulting from the different
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`circumstances of Anker’s district court proceeding versus Apple’s district court
`5
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`proceeding. As such, Anker’s Petition does “not present issues that might
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`Proceeding No. IPR2022-00595
`Attorney Docket No: 46570-0004IP1
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`complicate or delay” the existing Apple IPR. See Enzymotec Ltd. v. Neptune
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`Techs & Bioresources, Inc., IPR2014-00556, Paper 19 at 6 (July 9, 2014) (“a
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`policy preference for joining a party that does not present new issues”).
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`Moreover, if joined, Anker agrees to take an “understudy” role as
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`petitioners in other similarly joined proceedings have done. See, e.g., Everlight
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`Electronics Co., Ltd. et al v. Document Security Systems, Inc., IPR2018-01244,
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`Paper 15 at 6-7 (September 27, 2018) (granting institution and joinder where
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`“Petitioner agrees to assume a complete ‘understudy role’”). As such, joinder
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`would have little, if any, impact on the Apple IPR because no new grounds
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`would be added, the schedule need not be affected, no additional briefing or
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`discovery would be required, and no additional burdens would be placed on
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`Patent Owner.
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`Furthermore, joinder is “appropriate” here because Anker is currently
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`involved in litigation based on Patent Owner’s allegation that Anker’s products
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`infringe the ʼ392 patent. Anker therefore has an undeniable interest in the
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`substantial questions of invalidity surrounding the ʼ392 patent, and granting
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`Anker’s motion for joinder will fairly protect such interest and Anker’s
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`continued participation in the IPR process—even if Apple settles with Patent
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`6
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`Owner or otherwise ceases active participation in the earlier IPR. As such,
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`Proceeding No. IPR2022-00595
`Attorney Docket No: 46570-0004IP1
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`granting Anker’s motion for joinder will facilitate a continued and fair review
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`of the ’392 patent, thereby promoting the public interest in “permitting full and
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`free competition in the use of ideas which are in reality a part of the public
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`domain.” Lear, Inc. v. Adkins, 395 U.S. 653, 670 (1969).
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`ii. Factor 2: Anker’s Petition proposes no new grounds
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`of unpatentability
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`Anker’s Petition does not present any new grounds or arguments
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`regarding unpatentability. It is substantively identical to Apple’s Petition in that
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`regard. The Board “routinely grants motions for joinder where the party seeking
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`joinder introduces identical arguments and the same grounds raised in the
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`existing proceeding,” and Anker should be treated no differently than other
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`petitioners in such circumstances. BlackBerry Corp. v. Uniloc 2017 LLC,
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`IPR2019-01283, Paper 10 at 8 (PTAB Nov. 5, 2019) (quoting Samsung,
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`IPR2016-00962, Paper 12 at 9) (emphasis added). This factor therefore favors
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`joinder.
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`iii. Factor 3: Joinder will not unduly burden or
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`negatively impact the Apple IPR
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`Joinder will not unduly burden Patent Owner. Because Anker’s Petition
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`7
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`challenges the same claims based upon the same prior art grounds and cited
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`Proceeding No. IPR2022-00595
`Attorney Docket No: 46570-0004IP1
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`evidence as that of Apple’s Petition, there would be no new issues for Patent
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`Owner to address after institution of Apple’s IPR. See Sony Corp. v. Memory
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`Integrity, LLC, IPR2015-01353, Paper 11 at 6 (PTAB Oct. 15, 2015) (noting the
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`substantively identical issues and evidence between the two petitions did not
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`“necessitate any additional briefing or discovery from Patent Owner beyond that
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`already required in [the original IPR]”). To be clear, both IPR petitions share
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`the same expert (Dr. Phinney)1 providing the same substantive testimony
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`regarding the prior art grounds. See EX1003. Accordingly, joining Anker’s IPR
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`petition of the ’392 patent to Apple’s IPR petition will allow for simplified and
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`efficient discovery with regard to Dr. Phinney (e.g., a common date for
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`deposition, etc.).
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`Likewise, joinder will not negatively impact the trial schedule of the
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`1 Notably, Anker is simply refiling the declaration prepared and originally filed
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`by Apple in IPR2022-00529, with the exception of the introductory statement from
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`Dr. Phinney (¶ 1). Dr. Phinney’s testimony related to the prior art grounds is
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`identical, and no new issues were raised. Petitioner has separately engaged Dr.
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`Phinney with respect to this present IPR proceeding.
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`8
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`Apple IPR, if instituted. If Apple’s petition is instituted, and joinder of Anker is
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`Proceeding No. IPR2022-00595
`Attorney Docket No: 46570-0004IP1
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`granted, Anker expressly consents to the trial schedule issued in the Apple IPR.
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`Further, as described below, Anker agrees to take an “understudy” role in the
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`joined proceeding, so long as Apple remains an active party in the joined
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`proceeding.
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`iv. Factor 4: Procedures to simplify briefing and discovery
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`In the event the Apple IPR is instituted and Anker is joined, Anker agrees
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`to take an “understudy” role in the joined proceeding, so long as Apple remains
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`a party and active participant in the proceeding. See, e.g., Apple Inc. v. INVT
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`SPE LLC, IPR2019-00958, Paper 9 at 6-8 (PTAB May 30, 2019) (granting
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`motion for joinder where the movant presented a substantively identical petition
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`and agreed to take an “understudy” role in the joined proceeding); Intel Corp. v.
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`Alacritech, Inc., IPR2018-01352, Paper 11 at 3–5 (PTAB Jan. 8, 2019) (same).
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`To be clear, Anker only contemplates assuming the role of primary petitioner in
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`the instituted Apple IPR if (i) Apple is terminated as a party to the proceeding,
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`or (ii) Apple ceases participating in the proceeding such that the proceeding is
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`no longer “meaningfully adversarial,” contrary to the public interest. See ZTE
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`(USA), Inc., et al. v. CyWee Group Ltd., IPR2019-00143, Paper 50 at 7-9
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`(PTAB July 17, 2020) (allowing a joinder petitioner to assume the role of
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`9
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`primary petitioner with respect to a motion to amend because the “trial no
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`Proceeding No. IPR2022-00595
`Attorney Docket No: 46570-0004IP1
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`longer appears to be meaningfully adversarial” given the primary petitioner’s
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`decision not to oppose revised amended claims).
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`As an understudy in the Apple IPR, Anker agrees to the following
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`conditions regarding the joined proceeding, so long as Apple remains an active
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`party in the joined proceeding:
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` All filings by Anker in the joined proceeding shall be consolidated with
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`the filings of Apple unless a filing solely concerns issues that do not
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`involve Apple2;
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` Anker shall not be permitted to raise any new grounds not already
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`instituted by the Board in the Apple IPR, or introduce any argument or
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`discovery not already introduced by Apple;
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` Anker shall be bound by any agreement between Patent Owner and
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`Apple concerning discovery and/or depositions; and
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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 Anker to request and file separate papers with respect to Anker’s individual
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`status as petitioner in the proceeding—e.g., a motion to terminate.
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`10
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` At deposition, Anker shall not receive any direct examination, cross-
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`Proceeding No. IPR2022-00595
`Attorney Docket No: 46570-0004IP1
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`examination, or redirect time beyond that permitted in this proceeding
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`for Apple alone under either 37 C.F.R. § 42.53 or any agreement
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`between Patent Owner and Apple.
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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
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`Intel Corp., IPR2018-01352, Paper 11 at 4–5 (granting a motion for joinder with
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`such limitations on the understudy).
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`Additionally, with respect to any oral hearing, Apple will be responsible
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`for the presentation before the Board. Anker, when in the understudy role, will
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`not request any additional time to independently argue before the Board or
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`attempt to 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 Anker had never been joined.
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`3 While Anker will not materially participate in calls with the Board, depositions,
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`and any oral hearing, Anker anticipates that its counsel will attend such events.
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`Additionally, Anker’s understudy role does not foreclose communication between
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`Anker and other petitioners in the Apple IPR
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`11
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`Consolidated briefing and discovery will ensure a simplified and efficient
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`Proceeding No. IPR2022-00595
`Attorney Docket No: 46570-0004IP1
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`joined proceeding. As such, this factor also favors joinder.
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`IV. CONCLUSION
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`For the reasons above, Anker respectfully requests that the Board (i)
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`institute Anker’s concurrently filed Petition for Inter Partes Review of the ’392
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`patent; and (ii) if the Apple IPR is instituted, grant joinder.
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`Respectfully submitted,
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`/Nicholas W. Stephens/
`Nicholas Stephens, Reg. No. 74,320
`Fish & Richardson P.C.
`Attorney for Petitioner
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`Dated : 02/22/2022
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`(Control No. IPR2022-00595)
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`12
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`Proceeding No. IPR2022-00595
`Attorney Docket No: 46570-0004IP1
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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)
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`and 37 C.F.R. § 42.105, service was made on Patent Owner as detailed below.
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`
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`Date of service February 22, 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).
`Persons served BAKER BOTTS L.L.P.
`2001 Ross Avenue, Suite 900
`Dallas, TX 75201
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`/Kristyn Waldhauser/
`Kristyn Waldhauser
`Fish & Richardson P.C.
`60 South Sixth Street, Suite
`3200
`Minneapolis, MN 55402
`(612) 638-5731
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