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