Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Date: December 22, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMAZON.COM, INC., AMAZON.COM SERVICES, LLC, AMAZON
`WEB SERVICES, INC, and T-MOBILE USA, INC.,
`Petitioners,
`v.
`VOIP-PAL.COM, INC.,
`Patent Owner.
`
`IPR2022-01180
`Patent 10,880,721 B2
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, TERRENCE W. McMILLIN, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`McMILLIN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Denying Motion for Joinder
`35 U.S.C. § 315
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 11
`Date: December 22, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMAZON.COM, INC., AMAZON.COM SERVICES, LLC, AMAZON
`WEB SERVICES, INC, and T-MOBILE USA, INC.,
`Petitioners,
`v.
`VOIP-PAL.COM, INC.,
`Patent Owner.
`
`IPR2022-01180
`Patent 10,880,721 B2
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, TERRENCE W. McMILLIN, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`McMILLIN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Denying Motion for Joinder
`35 U.S.C. § 315
`
`
`
`
`
`
`
`
`
`
`
`IPR2022-01180
`Patent 10,880,721 B2
`
`INTRODUCTION
`I.
`Amazon.com, Inc., Amazon.com Services, LLC, Amazon Web
`Services, Inc., and T-Mobile USA, Inc. (collectively, “Petitioners”) filed a
`Petition to institute an inter partes review of claims 1, 6, 14–16, 20, 25, 34,
`38, 39, 43, 45, 46, 49, 50, 135, 136, and 140 (“the challenged claims”) of
`U.S. Patent No. 10,880,721 B2 (Ex. 1001, “the ’721 patent”) pursuant to
`35 U.S.C. § 311 et seq. Paper 1 (“Petition” or “Pet.”). VoIP-Pal.com, Inc.
`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Preliminary
`Response” or “Prelim. Resp.”).
`In the Petition, Petitioners indicated that the reasons for finding the
`challenged claims unpatentable were identical to the reasons set forth in the
`Petition in IPR2022-01074 (“the 1074 proceeding”). Pet. 1. The Petition in
`the 1074 proceeding sought cancellation of the same claims challenged in
`this proceeding on the same grounds asserted in this proceeding. Compare
`IPR2022-01074 Paper 1 (Petition), 4–5, with Pet. 5–6. In addition, the
`Patent Owner’s Preliminary Response in the 1074 proceeding was
`substantially the same as its Preliminary Response in this proceeding.
`Compare IPR2022-01074 Paper 6 (Preliminary Response), with Prelim.
`Resp. The Board denied institution on the merits in the 1074 proceeding.
`See IPR2022-01074 Paper 10, 25.
`Concurrently with the Petition, Petitioners filed a Motion for Joinder.
`Paper 5 (“Mot. for Joinder”). In the Motion for Joinder, Petitioners request
`that they be joined as a party in the 1074 proceeding. Mot. for Joinder 1, 13.
`Patent Owner filed an Opposition to the Petitioners’ Motion for Joinder.
`Paper 8. And, Petitioner filed a Reply in Support of the Motion for Joinder.
`Paper 9.
`
`2
`
`
`
`IPR2022-01180
`Patent 10,880,721 B2
`For the reasons discussed below, we deny institution and deny the
`Motion for Joinder.
`
`II. ANALYSIS
`The denial of institution on the merits in the 1074 proceeding dictates
`that institution also be denied in this proceeding. Because we did not
`institute review in the proceeding that Petitioner seeks to join as a party, we
`also deny the Motion for Joinder.
`A. Institution of Inter Parties Review
`Petitioners repeatedly indicate that the Petition is substantively
`identical to the Petition in the 1074 proceeding. In the “Introduction,” the
`Petition states, “[f]or the reasons below, which are identical to the petition
`in IPR2022-01074, the challenged claims should be found unpatentable and
`canceled.” Pet. 1 (emphasis added). The Petitioners’ Motion for Joinder
`states:
`The Petition is materially the same as the petition filed in the
`1074 proceeding (“Google’s Petition”). The Petition and the
`Google Petition challenge the same claims, on the same
`grounds, and rely on the same prior art and evidence, including
`an identical declaration from the same expert.[1]
`Petitioners agree to proceed solely on the grounds,
`evidence, and arguments advanced, or that will be advanced, in
`the 1074 proceeding as instituted.
`
`
`* * *
`
`
`Here, joinder with the 1074 proceeding is appropriate because
`the present Petition introduces identical arguments and the
`same grounds raised in the existing 1074 proceeding (i.e., they
`contain the same grounds, based on the same prior art
`
`1 In a footnote to the Motion for Joinder, Petitioners state, “[t]he declaration
`is a duplicate of the declaration filed in IPR2022-01074.” Mot. for Joinder 1
`n.1.
`
`3
`
`
`
`IPR2022-01180
`Patent 10,880,721 B2
`combinations and supporting evidence, against the same
`claims). Indeed, there are no changes to the facts, evidence, or
`arguments used by Google’s Petition in the 1074 proceeding in
`demonstrating satisfaction of the implicated claims by the
`applied prior art.
`
`
`* * *
`
`
`Petitioners have copied the substance of Google’s Petition and
`have relied on the same accompanying declaration. . . .
`Petitioners are using the same expert and have submitted an
`identical declaration as in the 1074 proceeding. . . . The present
`Petition introduces no new substantive issues relative to the
`1074 proceeding and does not seek to broaden the scope of the
`1074 proceeding. . . .
`[T]he present Petition presents no new issues or grounds of
`unpatentability.
`
`
`* * *
`
`
`Through this motion to join and corresponding Petition,
`Petitioners have not modified the positions advanced in the
`1074 proceeding.
`
`Mot. for Joinder 1–2, 6–7, 10. Thus, Petitioners have repeatedly indicated
`that the Petition in this proceeding includes identical grounds and arguments
`and relies on the same prior art and declaration and other evidence as in the
`1074 proceeding. And, the Patent Owner’s Preliminary Response in the
`1074 proceeding is substantively identical to the Preliminary Response in
`this proceeding on the merits of the challenge to the claims. Compare
`IPR2022-01074 Paper 6, 30–48, with Prelim. Resp. 33–46,
`After consideration of the arguments and evidence in the Petition and
`the Preliminary Response in the 1074 proceeding, we denied institution,
`because “Petitioner [in the 1074 proceeding] ha[d] not shown that the cited
`art disclose[d] all the limitations of any challenged claim” and that,
`
`4
`
`
`
`IPR2022-01180
`Patent 10,880,721 B2
`therefore, “there [wa]s not a reasonable likelihood that the Petitioner would
`prevail with respect at least one of the claims challenged in the Petition.”
`IPR2022-01074 Paper 10, 25. Because the arguments and the evidence in
`this proceeding are substantively identical to the arguments and evidence in
`the 1074 proceeding, we deny institution in this proceeding for the reasons
`set forth in the Decision Denying Institution (IPR2022-01074 Paper 10) in
`the 1074 proceeding.
`
`B. Motion for Joinder
`The Director may grant a motion for joinder and allow the movant to
`“join as a party” an existing proceeding only “[i]f the Director institutes an
`inter partes review” in the proceeding to which joinder as a party is sought.
`35 U.S.C. § 315(c). Petitioner implicitly recognized this prerequisite to
`granting its Motion for Joinder when it stated: “Petitioners request that . . .
`the motion be granted only if, an IPR is instituted in the 1074 proceeding.”
`Mot. for Joinder 1. Because we did not institute review in the 1074
`proceeding, we deny the Motion for Joinder.
`III. CONCLUSION
`For the reasons stated above, we do not institute inter partes review
`on any claims or any challenge to the claims of the ’721 patent and we deny
`the Motion for Joinder.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied and we do not institute inter
`partes review of any challenged claim of U.S. Patent No. 10,880,721 B2;
`and
`
`FURTHER ORDERED that the Petitioners’ Motion for Joinder is
`denied.
`
`5
`
`
`
`IPR2022-01180
`Patent 10,880,721 B2
`FOR PETITIONER:
`
`Kourtney Merrill
`Daniel Shvodian
`Amanda Tessar
`Christopher Kelley
`PERKINS COIE LLP
`Merrill-ptab@perkinscoie.com
`Shvodian-ptab@perkinscoie.com
`Tessar-ptab@perkinscoie.com
`Kelley-ptab@perkinscoie.com
`
`FOR PATENT OWNER:
`
`Lewis E. Hudnell, III
`Nicolas S. Gikkas
`HUDNELL LAW GROUP P.C.
`lewis@hudnelllaw.com
`nick@hudnelllaw.com
`
`
`6
`
`
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