`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`META PLATFORMS, INC.,
`Petitioner
`
`v.
`
`VOIP-PAL.COM, INC.,
`(Alleged) Patent Owner
`
`
`U.S. PATENT NO. 10,880,721
`
`Case IPR2022-01235
`
`
`PETITIONER’S NOTICE REGARDING MULTIPLE PETITIONS
`
`
`
`
`
`
`
`Petitioner’s Notice Regarding Multiple Petitions
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`I.
`RANKING OF THE PETITIONS ................................................................... 1
`II.
`III. DIFFERENCES BETWEEN THE PETITIONS AND WHY THEY
`SHOULD BOTH BE INSTITUTED ............................................................... 2
`IV. CONCLUSION ................................................................................................ 3
`
`
`
`i
`
`
`
`
`I.
`
`Petitioner’s Notice Regarding Multiple Petitions
`
`INTRODUCTION
`Petitioner is filing two petitions that challenge non-overlapping sets of claims
`
`in U.S. Patent No. 10,880,721 (“the ’721 Patent”). The “patent owner has asserted
`
`a large number of claims in litigation,” including claims that are distinct from one
`
`another, that collectively comprise several thousand words of claim language. See
`
`Patent Trial and Appel Board Consolidated Trial Practice Guide (November 2019)
`
`at 59. More than one petition is therefore necessary to sufficiently address the
`
`challenged claims, and the Board should exercise its discretion to institute both
`
`petitions.
`
`II. RANKING OF THE PETITIONS
`Petitioner requests that the Board consider the petitions in the following order,
`
`although, for the reasons explained below, the Board’s analysis would not be
`
`complete without considering both petitions:
`
`Rank
`
`Petition
`
`Challenged Claims
`
`Primary References
`
`A
`
`B
`
`IPR2022-01235 51-52, 57, 60, 63, 65, 67,
`73, 77, 103-104, 108-110,
`124, 130, 133, and 138-
`139
`
`IPR2022-01234 1, 2, 6, 9, 14-16. 20, 25,
`34, 38-39, 43, 45-46, 49-
`50, 135-136, and 140
`
`Buckley (EX1005)
`Bates (EX1009)
`Ejzak (EX1007)
`
`Buckley (EX1005)
`Bates (EX1009)
`Ejzak (EX1007)
`
`
`
`1
`
`
`
`Petitioner’s Notice Regarding Multiple Petitions
`
`
`III. DIFFERENCES BETWEEN THE PETITIONS AND WHY THEY
`SHOULD BOTH BE INSTITUTED
`The two petitions challenge 39 claims, 32 of which have been asserted by
`
`Patent Owner against Petitioner in the parallel District Court litigation, VoIP-
`
`Pal.com, Inc. v. Meta Platforms, Inc., Case No. 3:22-cv-03202-JD (N.D. Cal.). The
`
`nearly three dozen claims asserted by Patent Owner collectively comprise over 2,900
`
`words, making it practically infeasible to substantively analyze all of them in a single
`
`petition, given the word limit.
`
`There are also differences between the claims that warrant grouping them
`
`separately for analysis. In particular, independent claims 1, 20, 38, and 50 are
`
`claimed from the perspective of the mobile device (telephone), while independent
`
`claims 51, 77, 103, and 130 are claimed from the perspective of the server. As a
`
`result, the claims in the two claim sets recite some different language and claim
`
`elements. For example, the server-side claims recite elements regarding the
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`specifics to “produce an access code” (cls. 51, 77, 103) that the telephone-side
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`claims do not.1
`
`
`1 During the prosecution of the ’721 Patent’s parent application, the applicant
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`bucketed the telephone and server claims separately, recognizing the two claims
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`sets are
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`logically distinct. Compare
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`IPR2022-01231, EX1002, 1840
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`(“Independent Claims 1, 12, 22, and 321 all recite a common feature….”), with
`
`
`
`2
`
`
`
`
`
`Petitioner’s Notice Regarding Multiple Petitions
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`Given the number of asserted claims, their length, and their different
`
`groupings, Petitioner reasonably divided its challenge into two petitions: (1)
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`IPR2022-01235 challenging the server-side claims (ranked A above), and (2)
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`IPR2022-01234 challenging the telephone-side claims (ranked B above). There is
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`no overlap in the challenged claims across the two petitions. The Board has
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`instituted multiple petitions in similar situations, and should do so here. See, e.g.,
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`Microsoft Corp. v. Synkloud Tech., LLC, IPR2020-01269, Paper 9 at 7–9 (April 7,
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`2021) (instituting two petitions for IPR where “the length of the claims, and the
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`difference in scope of [the independent claims], warranted the filing of two
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`petitions”); Adobe Inc. v. Synkloud Tech., LLC, IPR2020-01392, Paper 8 at 9–10
`
`(March 11, 2021) (similar).
`
`IV. CONCLUSION
`Petitioner is only filing these two IPR petitions against the ’721 Patent, and
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`has not previously filed any IPR petitions against the ’721 Patent. Petitioner is thus
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`not abusing process, rather Petitioner is merely providing the Board with sufficient
`
`
`id., 1843 (“Regarding independent Claims 33, 52, 71 and 90, these claims all
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`recite in various forms the following exemplary language….”).
`
`
`
`3
`
`
`
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`context to fully understand the nature of the challenged claims and the asserted prior
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`Petitioner’s Notice Regarding Multiple Petitions
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`art. For these reasons, the Board should institute both petitions.2
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`
`
`Date: June 30, 2022
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/W. Todd Baker/
`W. Todd Baker (No. 45,265)
`todd.baker@kirkland.com
`Postal and Hand-Delivery Address:
`KIRKLAND & ELLIS LLP
`1301 Pennsylvania Ave., N.W.
`Washington, D.C. 20004
`Telephone: (202) 389-5000
`Facsimile: (202) 389-5200
`
`Ellisen Shelton Turner (No. 54,503)
`ellisen.turner@kirkland.com
`Joshua Popik Glucoft (No. 67,696)
`josh.glucoft@kirkland.com
`Postal and Hand-Delivery Address:
`KIRKLAND & ELLIS LLP
`2049 Century Park East,
`Los Angeles, CA 90067
`Telephone: (310) 552-4200
`Facsimile: (310) 552-5900
`
`Attorneys for Petitioner Meta Platforms,
`Inc.
`
`
`2 The Administrative Procedures Act and substantive and procedural due process
`
`weigh against denying the institution of either petition under 35 U.S.C. § 314(a).
`
`
`
`4
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 10,880,721
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing document was
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`served on June 30, 2022 via overnight delivery directed to the attorney of record for
`
`the patent at the following address:
`
`Thorpe North & Western, LLP
`8180 South 700 East
`Suite 350
`Sandy, Utah 84070
`
`A courtesy copy was also served by electronic mail on the attorneys of record for
`
`the following related matter:
`
`VoIP-Pal.com, Inc. v. Meta Platforms, Inc. et al., Case No. 3:22-cv-03202
`(N.D. Cal.)
`
`Lewis E. Hudnell, III
`lewis@hudnelllaw.com
`Nicolas S. Gikkas
`nick@hudnelllaw.com
`HUDNELL LAW GROUP P.C.
`800 W. El Camino Real Suite 180
`Mountain View, California 94040
`
`Sean Franklin Parmenter
`sean@parmenterip.com
`Parmenter Intellectual Property Law, PLLC
`8980 N Pine Hollow Dr
`Cedar Hills, UT 84062
`
`
`/W. Todd Baker/
`W. Todd Baker (No. 45,265)
`
`
`
`
`
`
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