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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ANKER INNOVATIONS LTD.,
`Petitioner
`
`v.
`
`
`
`MYPAQ HOLDINGS LTD.,
`Patent Owner
`
`
`
`Case IPR2022-01134
`Patent 8,477,514
`
`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, and 42.122(b)
`
`
`
`
`
`I.
`II.
`III.
`
`IV.
`
`
`Proceeding No. IPR2022-01134
`
`TABLE OF CONTENTS
`
`STATEMENT OF PRECISE RELIEF REQUESTED ..................................... 3
`BACKGROUND AND RELATED PROCEEDINGS .................................... 4
`STATEMENT OF REASONS FOR RELIEF REQUESTED ......................... 5
`A. Legal Standard .......................................................................................... 5
`B. Anker’s Motion for Joinder is Timely ..................................................... 6
`C. The Kyocera Factors Favor Joinder .......................................................... 6
`i.
`Factor 1: Joinder is appropriate ......................................................... 6
`ii. Factor 2: Anker’s Petition proposes no new grounds of
`unpatentability .................................................................................. 8
`iii. Factor 3: Joinder will not unduly burden or negatively impact the
`Samsung/Dell IPR ............................................................................ 9
`iv. Factor 4: Procedures to simplify briefing and discovery ................ 10
`CONCLUSION .............................................................................................. 12
`
`
`
`i
`
`
`
`
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Proceeding No. IPR2022-01134
`
`Anker Innovations Ltd. (“Anker”) respectfully submits this Motion for Joinder
`
`together with a Petition for Inter Partes Review in IPR2022-01134 (“Anker’s
`
`Petition”) challenging U.S. Patent No. 8,477,514 (“the ’514 patent”).
`
`On December 14, 2021, Samsung Electronics Co., Ltd. (“Samsung”) and Dell
`
`Technologies Inc. (“Dell”) filed an earlier petition in IPR2022-00311 (“the
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`Samsung/Dell IPR”) that also challenges the ’514 patent. The Samsung/Dell IPR was
`
`instituted on May 23, 2022. Counsel for Anker conferred with counsel for
`
`Samsung/Dell, and Samsung/Dell does not oppose joinder.
`
`As such, Anker requests inter partes review and joinder with the Samsung/Dell
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`IPR pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b). Joinder is appropriate
`
`because Anker’s Petition is substantively identical to the petition in the Samsung/Dell
`
`IPR—challenging the same claims of the ’514 patent on the same grounds while
`
`relying on the same prior art, arguments, and evidence (i.e., Anker’s Petition is a
`
`“copycat” petition). If, however, the Samsung/Dell IPR is terminated prior to
`
`institution, Anker respectfully requests that this motion be withdrawn, and Anker’s
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`petition be instituted against the ’514 patent.
`
`Anker is filing this motion for joinder rather than a standalone petition, and is
`
`doing so expeditiously. See, e.g., General Plastic Indus. Co. v. Cannon Kabushiki
`
`Kaisha, IPR2016-01357, Paper 19 at 16 (PTAB Sept. 6, 2017) (precedential) (“In
`3
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`Proceeding No. IPR2022-01134
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`exercising discretion…we are mindful of the goals of the AIA–namely, to improve
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`patent quality and make the patent system more efficient by the use of post-grant
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`review procedures”); Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB
`
`Mar. 20, 2020) (precedential) (“the Board takes a holistic view of whether efficiency
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`and integrity of the system are best served by denying or instituting review”). Anker’s
`
`request here will increase efficiency in at least two ways. First, Anker will reduce the
`
`number of distinct, parallel challenges to the ’514 patent at the PTAB because Anker
`
`is requesting joinder rather than pursuing its own standalone petition. Second, Anker
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`is filing its copycat petition and motion to join within 30 days of the institution of the
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`Samsung/Dell IPR—thereby simplifying the schedule between the two IPRs and
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`reducing the likelihood of duplicative efforts across multiple forums.
`
`Finally, not only is Anker’s request for joinder timely (filed within 30 days of the
`
`institution of the Samsung/Dell IPR), but Anker is committed to promoting efficiency
`
`in discovery and briefing by taking an “understudy role.” Thus, joining Anker’s IPR
`
`with the Samsung/Dell IPR will not unduly burden or prejudice Patent Owner or
`
`Samsung and Dell. Instead, it will accomplish the goals of 35 U.S.C. §315(c) while
`
`also achieving for a just, speedy, and inexpensive determination of related
`
`proceedings.
`
`II. BACKGROUND AND RELATED PROCEEDINGS
`
`1.
`
`
`
`On February 10, 2022, MyPAQ Holdings Ltd. (“MyPAQ”)—the
`4
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`Proceeding No. IPR2022-01134
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`purported Patent Owner—filed a complaint asserting the ’514 patent against Anker in
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`the U.S. District Court for the Western District of Texas (Case No. 6:22-cv-00150).
`
`2.
`
`On April 23, 2021, MyPAQ filed a complaint asserting the ’514 patent
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`against Samsung in the U.S. District Court for the Western District of Texas (Case No.
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`6:21-cv-00398).
`
`3.
`
`On September 10, 2021, MyPAQ filed a complaint asserting the ’514
`
`patent against Dell in the U.S. District Court for the Western District of Texas (Case
`
`No. 6:21-cv-00933).
`
`4.
`
`On December 14, 2021, Samsung and Dell jointly timely filed a Petition
`
`for Inter Partes Review challenging claims 1-20 of the ’514 patent (“Samsung/Dell
`
`Petition”). See IPR2022-00311, Paper 3 (PTAB Dec. 14, 2021).
`
`5.
`
`Anker’s present Petition for IPR challenges the same claims of the ’514
`
`patent using the same grounds as Samsung/Dell Petition in case no. IPR2022- 00311—
`
`including citing to the same expert testimony and evidence supporting those grounds.
`
`As such, Anker’s present Petition is substantively identical as to those grounds, and
`
`presents no new issues.
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`A. Legal Standard
`
`The Board may join as a party to an instituted inter partes review a person who
`
`has properly filed a petition for inter partes review that warrants institution. 35 U.S.C.
`5
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`Proceeding No. IPR2022-01134
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`§ 315(c). Any request for joinder must be filed “no later than one month after the
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`institution date of any inter partes review for which joinder is requested.” 37 C.F.R. §
`
`42.122(b). A petition for inter partes review is not subject to the one year statutory
`
`time bar if the petition is accompanied by a request for joinder. 35 U.S.C. § 315(b); 37
`
`C.F.R. § 42.122(b).
`
`“A motion for joinder should (1) set forth reasons why joinder is appropriate;
`
`(2) identify any new grounds of unpatentability asserted in the petition; (3) explain
`
`what impact (if any) joinder would have on the trial schedule for the existing review;
`
`and (4) address specifically how briefing and discovery may be simplified.” Samsung
`
`Elecs., Co. v. Raytheon Co., IPR2016-00962, Paper 12 at 5 (PTAB Aug. 24, 2016)
`
`(citing Kyocera Corp. v. Softview LLC, IPR2013- 00004, Paper 15 at 4 (PTAB Apr. 24,
`
`2013)).
`
`For the reasons detailed below, the Kyocera factors here favor joinder after the
`
`Samsung/Dell IPR is instituted.
`
`B. Anker’s Motion for Joinder is Timely
`
`Anker’s Motion for Joinder is timely because it is being filed within 30 days of
`
`the institution of the Samsung/Dell IPR. See 37 C.F.R. § 42.122(b).
`
`C. The Kyocera Factors Favor Joinder
`
`i.
`
`Factor 1: Joinder is appropriate
`
`Joinder with the Samsung/Dell IPR would be appropriate because Anker’s
`6
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`Proceeding No. IPR2022-01134
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`Petition involves the same patent, challenges the same claims, and is based on the same
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`grounds and same technical expert declaration testimony relied upon in Samsung/Dell
`
`Petition. Here, Anker’s Petition is substantively identical to the Samsung/Dell IPR
`
`regarding the challenged claims, the prior art grounds, and the cited evidence. Only
`
`minor changes were necessary to properly identify the filing party and to update the
`
`discretionary considerations (e.g., the Fintiv Factors, etc.) resulting from the different
`
`circumstances of Anker’s district court proceeding versus Samsung’s and Dell’s district
`
`court proceeding. As such, Anker’s Petition does “not present issues that might
`
`complicate or delay” the existing Samsung/Dell IPR. See Enzymotec Ltd. v. Neptune
`
`Techs & Bioresources, Inc., IPR2014-00556, Paper 19 at 6 (July 9, 2014) (“a policy
`
`preference for joining a party that does not present new issues”).
`
`Moreover, if joined, Anker agrees to take an “understudy” role as petitioners in
`
`other similarly joined proceedings have done. See, e.g., Everlight Electronics Co., Ltd.
`
`et al v. Document Security Systems, Inc., IPR2018-01244, Paper 15 at 6-7 (September
`
`27, 2018) (granting institution and joinder where “Petitioner agrees to assume a
`
`complete ‘understudy role’”). As such, joinder would have little, if any, impact on
`
`the Samsung/Dell IPR because no new grounds would be added, the schedule need not
`
`be affected, no additional briefing or discovery would be required, and no additional
`
`burdens would be placed on Patent Owner.
`
`Furthermore, joinder is “appropriate” here because Anker is currently involved
`7
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`Proceeding No. IPR2022-01134
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`in litigation based on Patent Owner’s allegation that Anker’s products infringe the ʼ514
`
`patent. Anker therefore has an undeniable interest in the substantial questions of
`
`invalidity surrounding the ʼ514 patent, and granting Anker’s motion for joinder will
`
`fairly protect such interest and Anker’s continued participation in the IPR process—
`
`even if Samsung and/or Dell settles with Patent Owner or otherwise ceases active
`
`participation in the Samsung/Dell IPR. As such, granting Anker’s motion for joinder
`
`will facilitate a continued and fair review of the ’514 patent, thereby promoting the
`
`public interest in “permitting full and free competition in the use of ideas which are in
`
`reality a part of the public domain.” Lear, Inc. v. Adkins, 395 U.S. 653, 670 (1969).
`
`ii.
`
`Factor 2: Anker’s Petition proposes no new grounds of
`unpatentability
`Anker’s Petition does not present any new grounds or arguments regarding
`
`unpatentability. It is substantively identical to Samsung/Dell Petition in that regard.
`
`The Board “routinely grants motions for joinder where the party seeking joinder
`
`introduces identical arguments and the same grounds raised in the existing
`
`proceeding,” and Anker should be treated no differently than other petitioners in such
`
`circumstances. BlackBerry Corp. v. Uniloc 2017 LLC, IPR2019-01283, Paper 10 at
`
`8 (PTAB Nov. 5, 2019) (quoting Samsung, IPR2016-00962, Paper 12 at 9) (emphasis
`
`added). This factor therefore favors joinder.
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`8
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`Proceeding No. IPR2022-01134
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`iii. Factor 3: Joinder will not unduly burden or negatively impact
`the Samsung/Dell IPR
`Joinder will not unduly burden Patent Owner. Because Anker’s Petition
`
`challenges the same claims based upon the same prior art grounds and cited evidence
`
`as that of Samsung/Dell Petition, there would be no new issues for Patent Owner to
`
`address. See Sony Corp. v. Memory Integrity, LLC, IPR2015-01353, Paper 11 at 6
`
`(PTAB Oct. 15, 2015) (noting the substantively identical issues and evidence between
`
`the two petitions did not “necessitate any additional briefing or discovery from Patent
`
`Owner beyond that already required in [the original IPR]”). To be clear, both IPR
`
`petitions share the same expert (Dr. Kiaei)1 providing the same substantive testimony
`
`regarding the prior art grounds. Accordingly, joining Anker’s IPR petition of the ’514
`
`patent to Samsung/Dell IPR petition will allow for simplified and efficient discovery
`
`with regard to Dr. Kiaei (e.g., a common date for deposition, etc.).
`
`Likewise, joinder will not negatively impact the trial schedule of the
`
`Samsung/Dell IPR. If joinder of Anker is granted, Anker expressly consents to the
`
`
`1 Notably, Anker is simply refiling the declaration prepared and originally filed by
`
`Samsung/Dell in IPR2022-00311, with the exception of the introductory statement
`
`from Dr. Kiaei (¶1). Dr. Kiaei’s testimony related to the prior art grounds is identical,
`
`and no new issues were raised. Petitioner has separately engaged Dr. Kiaei with
`
`respect to this present IPR proceeding.
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`9
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`Proceeding No. IPR2022-01134
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`trial schedule issued in the Samsung/Dell IPR. Further, as described below, Anker
`
`agrees to take an “understudy” role in the joined proceeding, so long as Samsung/Dell
`
`remains an active party in the joined proceeding.
`
`Factor 4: Procedures to simplify briefing and discovery
`iv.
`In the event Anker is joined, Anker agrees to take an “understudy” role in the
`
`joined proceeding, so long as Samsung/Dell remains a party and active participant in
`
`the proceeding. See, e.g., Apple Inc. v. INVT SPE LLC, IPR2019-00958, Paper 9 at 6-
`
`8 (PTAB May 30, 2019) (granting motion for joinder where the movant presented a
`
`substantively identical petition and agreed to take an “understudy” role in the joined
`
`proceeding); Intel Corp. v. Alacritech, Inc., IPR2018-01352, Paper 11 at 3–5 (PTAB
`
`Jan. 8, 2019) (same). To be clear, Anker only contemplates assuming the role of
`
`primary petitioner in the instituted Samsung/Dell IPR if (i) Samsung/Dell is terminated
`
`as a party to the proceeding, or (ii) Samsung/Dell ceases participating in the
`
`proceeding such that the proceeding is no longer “meaningfully adversarial,” contrary
`
`to the public interest. See ZTE (USA), Inc., et al. v. CyWee Group Ltd., IPR2019-
`
`00143, Paper 50 at 7-9 (PTAB July 17, 2020) (allowing a joinder petitioner to assume
`
`the role of primary petitioner with respect to a motion to amend because the “trial no
`
`longer appears to be meaningfully adversarial” given the primary petitioner’s decision
`
`not to oppose revised amended claims).
`
`As an understudy in the Samsung/Dell IPR, Anker agrees to the following
`
`
`
`10
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`Proceeding No. IPR2022-01134
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`conditions regarding the joined proceeding, so long as Samsung/Dell remains an active
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`party in the joined proceeding:
`
`•
`
`All filings by Anker in the joined proceeding shall be consolidated with the
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`filings of Samsung/Dell unless a filing solely concerns issues that do not
`
`involve Samsung/Dell2;
`
`•
`
`Anker shall not be permitted to raise any new grounds not already instituted
`
`by the Board in the Samsung/Dell IPR, or introduce any argument or
`
`discovery not already introduced by Samsung/Dell;
`
`•
`
`•
`
`Anker shall be bound by any agreement between Patent Owner and
`
`Samsung/Dell concerning discovery and/or depositions; and
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`At deposition, Anker shall not receive any direct examination, cross-
`
`examination, or redirect time beyond that permitted in this proceeding for
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`Samsung/Dell alone under either 37 C.F.R. § 42.53 or any agreement
`
`between Patent Owner and Samsung/Dell.
`
`See Apple, IPR2019-00958, Paper 9 at 7–8 (granting a motion for joinder where the
`
`
`2 Any consolidated filings jointly submitted by petitioners will not exceed the normal
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`page limits for a single party set forth in the rules. Circumstances may require Anker
`
`to request and file separate papers with respect to Anker’s individual status as
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`petitioner in the proceeding—e.g., a motion to terminate.
`
`
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`11
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`Proceeding No. IPR2022-01134
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`movant proposed the above limitations on its role as understudy); see also Intel Corp.,
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`IPR2018-01352, Paper 11 at 4–5 (granting a motion for joinder with such limitations
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`on the understudy).
`
`Additionally, with respect to any oral hearing, Samsung/Dell will be responsible
`
`for the presentation before the Board. Anker, 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
`
`proceeding will be no more complex than if Anker had never been joined.
`
`Consolidated briefing and discovery will ensure a simplified and efficient joined
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`proceeding. As such, this factor also favors joinder.
`
`IV. CONCLUSION
`
`For the reasons above, Anker respectfully requests that the Board (i) institute
`
`Anker’s concurrently filed Petition for Inter Partes Review of the ’514 patent; and (ii)
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`grant joinder.
`
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`3 While Anker will not materially participate in calls with the Board, depositions, and
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`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 Samsung/Dell IPR.
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`
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`12
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`
`
`DATE: June 15, 2022
`
`
`
`Proceeding No. IPR2022-01134
`
`
`
`
`
`Respectfully Submitted,
`
`_/s/ Ping Wang_________________
`Ping Wang
`RIMON P.C.
`Registration No. 48,328
`Attorney for Petitioner
`
`
`
`13
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`Proceeding No. IPR2022-01134
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of this Motion For Joinder has been
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`served via Federal Express on June 15, 2022 upon the following:
`
`BOISBRUN HOFMAN, PLLC
`1255 West 15th Street, Suite 400
`Plano TX 75075
`
`With a courtesy copy served on June 15, 2022 upon litigation counsel via
`
`electronic means upon the following individuals:
`
`Charles Ainsworth (charley@pbatyler.com)
`
`Robert Christopher Bunt (rcbunt@pbatyler.com)
`
`Alfonso G. Chan (achan@shorechan.com)
`
`Michael W. Shore (mshore@shorechan.com)
`
`Samuel E. Joyner (sjoyner@shorechan.com)
`
`Halima Shukri Ndai (hndai@shorechan.com)
`
`Brian D. Melton (bmelton@susmangodfrey.com)
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`Krisina J. Zuñiga (kzuniga@susmangodfrey.com)
`
`Steven M. Shepard (sshepard@susmangodfrey.com)
`
`DATE: June 15, 2022
`
`Respectfully Submitted,
`
`
`
`__/s/ Ping Wang________________
`
`Ping Wang
`RIMON P.C.
`Registration No. 48,328
`Attorney for Petitioner
`
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