UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
`
`Petitioners,
`
`v.
`
`JAWBONE INNOVATIONS, LLC,
`
`Patent Owner.
`
`
`Patent No. 11,122,357
`Filing Date: August 5, 2013
`Issue Date: September 14, 2021
`
`Inventor: Gregory C. Burnett
`Title: FORMING VIRTUAL MICROPHONE ARRAYS USING
`DUAL OMNIDIRECTIONAL MICROPHONE ARRAY (DOMA)
`
`
`__________________________________________________________________
`
`JAWBONE INNOVATIONS, LLC’S
`RESPONSE TO MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22, 42.122(b) TO IPR2022-01124
`
`Case No. IPR2022-01321
`__________________________________________________________________
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
`
`Petitioners,
`
`v.
`
`JAWBONE INNOVATIONS, LLC,
`
`Patent Owner.
`
`
`Patent No. 11,122,357
`Filing Date: August 5, 2013
`Issue Date: September 14, 2021
`
`Inventor: Gregory C. Burnett
`Title: FORMING VIRTUAL MICROPHONE ARRAYS USING
`DUAL OMNIDIRECTIONAL MICROPHONE ARRAY (DOMA)
`
`
`__________________________________________________________________
`
`JAWBONE INNOVATIONS, LLC’S
`RESPONSE TO MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22, 42.122(b) TO IPR2022-01124
`
`Case No. IPR2022-01321
`__________________________________________________________________
`
`
`
`
`TABLE OF CONTENTS
`
`IPR2022-01321
`PATENT NO. 11,122,357
`
`Page(s)
`
`
`I.
`II.
`
`INTRODUCTION ........................................................................................... 1
`ARGUMENT ................................................................................................... 1
`A.
`Legal Standard ....................................................................................... 1
`B.
`Patent Owner Will Address Whether Petitioners’ Petition
`Warrants Institution in its Preliminary Response ................................. 3
`The Board Should Deny Petitioners’ Motion as Premature .................. 3
`C.
`D. Granting Joinder Will Complicate the Proceedings .............................. 4
`E.
`The Gen. Plastic Factors Weigh Against Joinder ................................. 4
`III. CONCLUSION ................................................................................................ 6
`
`
`i
`
`
`
`IPR2022-01321
`PATENT NO. 11,122,357
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Inc. v. Uniloc 2017 LLC,
`Case No. IPR2020-00854, Paper 9 (P.T.A.B. Oct. 28, 2020)
`(precedential) ........................................................................................................ 4
`Dell, Inc. v. Network-1 Sec. Sols., Inc.,
`Case No. IPR2013-00385, Paper 17, 6 (P.T.A.B. July 29, 2013) ........................ 2
`Facebook, Inc. v. Windy City Innovations, LLC,
`973 F.3d 1321 (Fed. Cir. 2020) ........................................................................ 1, 3
`Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha,
`Case No. IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017) ................. 1, 4, 5, 6
`Linear Tech. Corp. v. In-Depth Test LLC,
`Case No. IPR2015-01994, Paper No. 7 (P.T.A.B. Oct. 20, 2015) ....................... 2
`Sony Corp. of Am. v. Network-1 Sec. Sols., Inc.,
`Case No. IPR2013-00386, Paper 16, 3 (P.T.A.B. Jul. 29, 2013) ......................... 1
`Statutes
`35 U.S.C. § 315(c) ................................................................................................. 2, 3
`Other Authorities
`37 C.F.R. § 42.20(c) ................................................................................................... 2
`37 C.F.R. § 42.122(b) ............................................................................................ 2, 3
`
`
`ii
`
`
`
`IPR2022-01321
`PATENT NO. 11,122,357
`
`EXHIBITS
`
`Exhibit No.
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`Description
`Apple, Inc.’s Opening Claim Construction Brief in (Public
`Version) Jawbone Innovations, LLC v. Apple, Inc., Case No.
`6:21-cv-00984-ADA, dated May 25, 2022
`Google LLC’s Opening Claim Construction Brief (Public
`Version) in Jawbone Innovations, LLC v. Google LLC, Case
`No. 6:21-cv-00985-ADA, dated May 25, 2022
`Defendant Google LLC’s Opposed Motion to Transfer to the
`Northern District of California (Public Version), Dkt. 43, in
`Jawbone Innovations, LLC v. Google LLC, Case No. 6:21-cv-
`00985-ADA dated April 29, 2022
`Defendant’s Preliminary Invalidity Contentions in Jawbone
`Innovations, LLC v. Apple, Inc., Case No. 6:21-cv-00984-
`ADA, dated April 6, 2022
`Defendants’ Preliminary Invalidity Contentions and Eligibility
`Contentions in Jawbone Innovations, LLC v. Samsung
`Electronics Co., Ltd., et al., Case No. 2:21-cv-00186-JRG,
`dated March 24, 2022
`
`
`
`
`
`
`
`
`
`
`
`
`iii
`
`
`
`IPR2022-01321
`PATENT NO. 11,122,357
`
`I.
`
`INTRODUCTION
`On July 27, 2022, Petitioners Samsung Electronics Co., Ltd., Samsung
`
`Electronics America, Inc., and Apple, Inc. (collectively, “Petitioners”) filed a
`
`Petition for Inter Partes Review (Paper 4, “Petition”) against U.S. Patent No.
`
`11,122,357 (Ex. 1001, “the ’357 Patent”). At the same time, Petitioners filed a
`
`“Motion for Joinder Under 35 U.S.C. § 315(c), 37 C.F.R. § 42.22, § 42.122(b) to
`
`IPR2022-01124,” seeking to join IPR2022-01124 (the “Google IPR”). Paper No. 5
`
`(“Motion”).
`
`The Board should deny Petitioners’ Motion because joinder will needlessly
`
`complicate the Google IPR. Moreover, the Gen. Plastic factors weigh in favor of
`
`denial of the Petition.
`
`II. ARGUMENT
`A. Legal Standard
`“To join a party to an instituted IPR, the plain language of § 315(c) requires
`
`two different decisions.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d
`
`1321, 1332 (Fed. Cir. 2020). The first decision is “whether the joinder [to]
`
`applicant’s petition for IPR ‘warrants’ institution under § 314.” The second is
`
`“whether to ‘join as a party’ the joinder applicant.” Id. “Joinder may be authorized
`
`when warranted, but the decision to grant joinder is discretionary.” Sony Corp. of
`
`Am. v. Network-1 Sec. Sols., Inc., Case No. IPR2013-00386, Paper 16, 3 (P.T.A.B.
`
`1
`
`
`
`IPR2022-01321
`PATENT NO. 11,122,357
`
`Jul. 29, 2013). “The fact that the [Director or his delegate the] Board has the
`
`discretion to join a party does not mean that joinder is automatic, particularly given
`
`the need to complete proceedings in a just, speedy, and inexpensive manner.” Dell,
`
`Inc. v. Network-1 Sec. Sols., Inc., Case No. IPR2013-00385, Paper 17, 6 (P.T.A.B.
`
`July 29, 2013).
`
`As the moving party, Petitioners have the burden of proof to establish that
`
`joinder is appropriate. 37 C.F.R. §§ 42.20(c), 42.122(b). When considering a motion
`
`for joinder, the Board examines factors including: (1) reasons why joinder is
`
`appropriate; (2) any new grounds of unpatentability asserted in the petition; (3) what
`
`impact (if any) joinder would have on the trial schedule for the existing review; and
`
`(4) specifically how briefing and discovery may be simplified. See Dell, Inc., Case
`
`No. IPR2013-00385, Paper 17 at 3.
`
`Institution of the proceeding to which a party seeks joinder must occur prior
`
`to a request for joinder. See 35 U.S.C. § 315(c) (“If the Director institutes an inter
`
`partes review . . . .”); see also 37 C.F.R. § 42.122(b) (“Any request for joinder must
`
`be filed no . . . later than one month after the institution date of any inter partes
`
`review for which joinder is requested.”). “It is clear from both the statute and the
`
`rule that a request for joinder is appropriate only if a decision granting institution
`
`has been entered in the inter partes review for which joinder is requested.” Linear
`
`Tech. Corp. v. In-Depth Test LLC, Case No. IPR2015-01994, Paper No. 7 at 4,
`
`2
`
`
`
`IPR2022-01321
`PATENT NO. 11,122,357
`
`(P.T.A.B. Oct. 20, 2015).
`
`B.
`
`Patent Owner Will Address Whether Petitioners’ Petition
`Warrants Institution in its Preliminary Response
`Patent Owner is preparing its Patent Owner Preliminary Response which will
`
`address whether Petitioners’ Petition warrants institution. A Petition that does not
`
`warrant institution cannot join another proceeding. Facebook, 973 F.3d at 1332
`
`(“The statute makes clear that the joinder decision is made after a determination that
`
`a petition warrants institution, thereby affecting the manner in which an IPR will
`
`proceed.”).
`
`C. The Board Should Deny Petitioners’ Motion as Premature
`Petitioners’ Motion should be denied as premature because no trial has been
`
`instituted in the Google IPR. Petitioners argue that their Petition is timely because
`
`37 C.F.R. § 42.122(b) sets a last date for a joinder request, but not an earliest date.
`
`Motion, 3. However, Petitioners ignore the plain language of the statute. 35 U.S.C.
`
`§ 315(c) specifies that joinder is appropriate only after the earlier Petition is
`
`instituted. 35 U.S.C. § 315(c) (“If the Director institutes an inter partes review, the
`
`Director, in his or her discretion, may join as a party to that inter partes review any
`
`person who properly files a petition under section 311 . . . .” (emphasis added)).
`
`With no IPR instituted, Petitioners’ joinder motion is improper under the
`
`statute and the Board should deny it.
`
`3
`
`
`
`IPR2022-01321
`PATENT NO. 11,122,357
`
`D. Granting Joinder Will Complicate the Proceedings
`Petitioners state that they will participate in an “understudy” role and “will
`
`assume the primary role only if Google ceases to participate in the Google IPR.”
`
`Motion, 6. However, Petitioners then immediately undercut that statement by
`
`carving out exceptions if a filing “solely concerns issues that do not involve Google.”
`
`Motion, 6. Petitioners similarly reserve rights to participate in the examination of
`
`witnesses. Id.
`
`These carve-outs leave open the possibility that Petitioners, in their sole
`
`judgment, could deem any substantive issue is subject to the exceptions and decide
`
`to take an active role. In such circumstances, joinder would cause needless
`
`complication.
`
`The Gen. Plastic Factors Weigh Against Joinder
`E.
`The Board has clarified that discretionary factors must be considered before
`
`determining a joinder motion. Apple Inc. v. Uniloc 2017 LLC, Case No. IPR2020-
`
`00854, Paper 9 (P.T.A.B. Oct. 28, 2020) (precedential) (“Uniloc”) (“[B]efore
`
`determining whether to join . . ., even though the Petition is a ‘me-too petition,’ we
`
`first determine whether application of the General Plastic factors warrants the
`
`exercise of discretion to deny the Petition under § 314(a).”) See also Gen. Plastic
`
`Indus. Co. v. Canon Kabushiki Kaisha, Case No. IPR2016-01357, Paper 19 at 15-
`
`4
`
`
`
`IPR2022-01321
`PATENT NO. 11,122,357
`
`19 (P.T.A.B. Sept. 6, 2017) (precedential). Nearly all of the Gen. Plastic factors
`
`weigh in favor of exercising discretion to deny the petition and joinder.
`
`First, as to Factor 1,1 Petitioners simply state that they have not previously
`
`filed a petition against the ’357 Patent. Motion, 7. However, Petitioners have
`
`consulted with counsel for Google on other matters relating to this patent. For
`
`example, Petitioner Apple and Google submitted identical claim construction briefs
`
`in the co-pending litigation in the Western District of Texas. Exs. 2001, 2002. And
`
`Google consulted with both Apple and Samsung prior to filing a transfer motion. Ex.
`
`2003 at 12. Petitioners do not address their cooperation with Google. Motion, 7. This
`
`factor should, therefore, weigh in favor of discretionary denial and thus against
`
`joinder.
`
`As to Factor 2, Petitioners refuse to indicate when they first learned of the
`
`references in the Petition. Motion, 7. However, Apple included each of the
`
`references on which the Petition relies—Kanamori, Elko, and McCowan—in its
`
`invalidity contentions in the co-pending litigation, served on April 6, 2022. Ex. 2004.
`
`Samsung, similarly, included Kanamori and Elko in its contentions served March
`
`24, 2022. Ex. 2005. This factor, accordingly, weighs in favor of denial.
`
`
`1 “[W]hether the same petitioner previously filed a petition directed to the same
`claims of the same patent.” Id. at 9.
`
`5
`
`
`
`IPR2022-01321
`PATENT NO. 11,122,357
`
`With respect to Factor 4, as discussed above, Petitioners do not state when
`
`they first learned of the references in the Petition. Motion, 8. Petitioners make no
`
`substantive argument as to this factor and, accordingly, this factor weighs in favor
`
`of denial.
`
`As to Factor 5, “whether the petitioner provides adequate explanation for the
`
`time elapsed between the filings of multiple petitions directed to the same claims of
`
`the same patent,”; Petitioners make no explanation for the elapsed time. Motion, 8-
`
`9.
`
`Finally, Factors 6 and 7 weigh in favor of denial for the reasons stated above
`
`as to the increased complexity from joinder.
`
`III. CONCLUSION
`Allowing joinder will needlessly complicate the proceedings in the Google
`
`IPR. Moreover, the Gen. Plastic factors favor denial of Petitioners’ Petition and
`
`Motion. Accordingly, the Board should deny Petitioners’ Motion.
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`Dated: August 29, 2022
`
`By:
`
`/
`/Peter Lambrianakos
`
`
`Peter Lambrianakos (Reg. No. 58,279)
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Tel. 212-257-5797
`Fax. 212-257-5796
`Email: plambrianakos@fabricantllp.com
`
`6
`
`
`
`IPR2022-01321
`PATENT NO. 11,122,357
`
`CERTIFICATE OF SERVICE
`A copy of JAWBONE INNOVATIONS, LLC’S RESPONSE TO MOTION
`
`FOR JOINDER UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.22 AND
`
`42.122(b) TO RELATED INTER PARTES REVIEW IPR2022-01124 and Exhibits
`
`2001 through 2005 have been served on Petitioner’s counsel of record as follows:
`
`Ari R. Sharifahmadian
`Email: ali.sharifahmadian@arnoldporter.com
`Jin-Suk Park
`Email: jin.park@arnoldporter.com
`J. Christopher Moulder
`Email: chris.moulder@arnoldporter.com
`ARNOLD & PORTER KAYE SCHOLER LLP
`601 Massachusetts Avenue, NW
`Washington, D.C. 20001-3743
`
`Attorneys for Samsung Electronics Co., Ltd.,
`and Samsung Electronics America, Inc.
`
`W. Karl Renner
`Email: renner@fr.com
`David L. Holt
`Parvin Ghane
`Email: PTABInbound@fr.com
`FISH & RICHARDSON
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, Minnesota 55402
`
`Attorneys for Apple Inc.
`
`August 29, 2022
`
`
`
`
`
`
`
`
`
`By:
`
`
`/
`/Peter Lambrianakos
`
`
`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
`FABRICANT LLP
`
`
`
`
`
`
`
`IPR2022-01321
`PATENT NO. 11,122,357
`
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Telephone: 212-257-5797
`Fax: 212-257-5796
`
`
`
`
`
`
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